[Federal Register Volume 65, Number 183 (Wednesday, September 20, 2000)]
[Rules and Regulations]
[Pages 57024-57061]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-23822]



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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1 and 5



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

  Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 5

RIN 0651-AB05


Changes to Implement Eighteen-Month Publication of Patent 
Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice in patent cases to implement certain 
provisions of the American Inventors Protection Act of 1999. These 
provisions of the American Inventors Protection Act of 1999 provide, 
with certain exceptions, for the publication of pending patent 
applications (other than design applications) at eighteen months from 
the earliest claimed priority date.

DATES: Effective Date: November 29, 2000.
    Applicability Date: Sections 1.103(d), 1.211, 1.213, 1.215, 1.217, 
1.219, and 1.221, and the changes to Secs. 1.14, 1.55, 1.72, 1.78, 
1.85, 1.99, 1.137, 1.138, and 1.311, apply to any patent application 
filed on or after November 29, 2000, and to any patent application in 
which applicant requests voluntary publication.

FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Robert W. 
Bahr, Karin L. Tyson, or Robert A. Clarke by telephone at (703) 308-
6906, or by mail addressed to: Box Comments--Patents, Assistant 
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to 
(703) 872-9411, marked to the attention of Robert W. Bahr.
    Concerning the electronic filing system (EFS): Jay Lucas or Michael 
Lewis by electronic mail message via the Internet addressed to 
[email protected].

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 
1999 (Title IV of the Intellectual Property and Communications Omnibus 
Reform Act of 1999 (S. 1948) as introduced in the 106th Congress on 
November 17, 1999) was incorporated and enacted into law on November 
29, 1999, by section 1000(a)(9), Division B, of Public Law 106-113, 113 
Stat. 1501 (1999). The American Inventors Protection Act of 1999 
contains a number of changes to title 35, United States Code. This 
notice revises the rules of practice to implement the provisions of 
sections 4501 through 4508 (Subtitle E, Domestic Publication of Patent 
Applications Published Abroad) of the American Inventors Protection Act 
of 1999. These provisions of the American Inventors Protection Act of 
1999 provide that, with certain exceptions, applications for patent 
shall be published promptly after the expiration of a period of 
eighteen months from the earliest filing date for which a benefit is 
sought under title 35, United States Code (``eighteen-month 
publication'').
    Section 4502 of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications 
for patent shall be published promptly after the expiration of a period 
of eighteen months from the earliest filing date for which a benefit is 
sought under title 35, United States Code, and that an application may 
be published earlier than the end of such eighteen-month period at the 
request of the applicant. Section 4502 of the American Inventors 
Protection Act of 1999 (35 U.S.C. 122(b)) also contains a number of 
exceptions to eighteen-month publication of patent applications.
    First: An application shall not be published if it is: (1) No 
longer pending; (2) subject to a secrecy order under 35 U.S.C. 181 or 
an application for which publication or disclosure would be detrimental 
to national security; (3) a provisional application under 35 U.S.C. 
111(b); or (4) an application for a design patent under 35 U.S.C. 
chapter 16. See 35 U.S.C. 122(b)(2)(A) and (d).
    Second: An application shall not be published if an applicant makes 
a request upon filing, certifying that the invention disclosed in the 
application has not and will not be the subject of an application filed 
in another country, or under a multilateral international agreement, 
that requires eighteen-month publication. An applicant may rescind such 
a request at any time. In addition, an applicant who has made such a 
request but who subsequently files an application directed to the 
invention disclosed in the application filed in the Office in a foreign 
country, or under a multilateral international agreement, that requires 
eighteen-month publication, must notify the Office of such filing 
within forty-five days after the date of the filing of such foreign or 
international application. An applicant's failure to timely provide 
such a notice to the Office will result in abandonment of the 
application (subject to revival if it is shown that the delay in 
submitting the notice was unintentional). If an applicant rescinds such 
a request or notifies the Office that an application was filed in a 
foreign country, or under a multilateral international agreement, that 
requires eighteen-month publication, the application is subject to 
eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).
    Third: If an applicant has filed applications in one or more 
foreign countries, directly or through a multilateral international 
agreement, and such foreign-filed applications or the description of 
the invention in such foreign-filed applications is less extensive than 
the application or description of the invention in the application 
filed in the Office, the applicant may submit a redacted copy of the 
application filed in the Office eliminating any part or description of 
the invention in such application that is not also contained in any of 
the corresponding applications filed in a foreign country. If the 
redacted copy of the application is received within sixteen months 
after the earliest filing date for which a benefit is sought under 
title 35, United States Code, the Office may publish only the redacted 
copy of the application. See 35 U.S.C. 122(b)(2)(B)(v).
    Section 4503(a) of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 119(b) to provide that no application for patent shall 
be entitled to a right of priority under 35 U.S.C. 119(a)-(d) unless a 
claim is filed in the Office, identifying the foreign application by 
specifying the application number of that foreign application, the 
intellectual property authority or country in or for which the 
application was filed, and the date of filing the application, at such 
time during the pendency of the application as required by the Office. 
Section 4503(a) of the American Inventors Protection Act of 1999 also 
amends 35 U.S.C. 119(b) to provide that the Office may consider the 
failure of the applicant to timely file a claim for priority as a 
waiver of any such claim, and may establish procedures, including the 
payment of a surcharge, to accept an unintentionally delayed claim 
under 35 U.S.C. 119(b)-(d). Section 4503(a) of the American Inventors 
Protection Act of 1999 also amends 35 U.S.C. 119(b) to authorize the 
Office to determine whether to require a certified copy of the original 
foreign application.
    Section 4503(b)(1) of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 120 to provide that no application shall be entitled 
to the benefit of an earlier filed application under 35 U.S.C. 120 
unless an amendment containing the specific reference to the earlier 
filed application is submitted at such time during the

[[Page 57025]]

pendency of the application as required by the Office. Section 
4503(b)(1) of the American Inventors Protection Act of 1999 also amends 
35 U.S.C. 120 to provide that the Office may consider the failure to 
submit such an amendment within that time period as a waiver of any 
benefit under 35 U.S.C. 120, and may establish procedures, including 
the payment of a surcharge, to accept an unintentionally delayed 
submission of an amendment under 35 U.S.C. 120.
    Section 4503(b)(2) of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 119(e) to provide that no application shall be 
entitled to the benefit of an earlier filed provisional application 
under 35 U.S.C. 119(e) unless an amendment containing the specific 
reference to the earlier filed provisional application is submitted at 
such time during the pendency of the application as required by the 
Office. Section 4503(b)(2) of the American Inventors Protection Act of 
1999 also amends 35 U.S.C. 119(e) to provide that the Office may 
consider the failure to submit such an amendment within that time 
period as a waiver of any benefit under 35 U.S.C. 119(e), and the 
Office may establish procedures, including the payment of a surcharge, 
to accept an unintentionally delayed submission of an amendment under 
35 U.S.C. 119(e) during the pendency of the application.
    Case law has indicated that, in certain instances, priority claims 
may be perfected after issuance. The U.S. Court of Appeals for the 
District of Columbia has held that the equitable or remedial provisions 
of 35 U.S.C. 251 authorize patentees to correct or perfect a claim for 
priority under 35 U.S.C. 119 in an issued patent by reissue. See 
Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 
1968). The U.S. District Court for the District of Columbia applied 
this rationale to permit a patentee to amend an intermediate abandoned 
application in a chain of applications for which a benefit was claimed 
under 35 U.S.C. 120 to include the specific reference required by 35 
U.S.C. 120. See Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In 
appropriate circumstances, the Office has permitted patentees to 
perfect claims under 35 U.S.C. 119, 120, or 121 in an issued patent by 
certificate of correction under 35 U.S.C. 255 and Sec. 1.323. See In re 
Schuurs, 218 USPQ 443 (Comm'r Pat. 1983); In re Lambrech, 202 USPQ 620 
(Comm'r Pat. 1976); In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975).
    The amendments to 35 U.S.C. 119 and 120 provide that the Office may 
consider the failure of the applicant to file a timely claim under 35 
U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and 1.78 
implement these amendments to 35 U.S.C. 119 and 120 by specifying time 
periods during the pendency of the application within which claims 
under 35 U.S.C. 119(a)-(d), 119(e), and 120 must be stated or are 
considered waived. 35 U.S.C. 119(b), 119(e), and 120 each provide that 
the Office may establish procedures to accept an unintentionally 
delayed submission of a claim under 35 U.S.C. 119(b), 119(e), or 120 
(respectively); however, 35 U.S.C. 119(e) requires that such 
unintentionally delayed claim (amendment) be submitted during the 
pendency of the application. Thus, a claim under 35 U.S.C. 119(a)-(d) 
or 120 for the benefit of a prior application may be added (or 
corrected) in an issued patent by reissue or certificate of correction 
(assuming the conditions for reissue or certificate of correction are 
otherwise met) by submitting such untimely claim under the procedures 
established in Sec. 1.55 or Sec. 1.78 (including payment of any 
applicable surcharge). A claim under 35 U.S.C. 119(e) for the benefit 
of a prior provisional application, however, must be added or corrected 
during the pendency of the application.
    Section 4504 of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 154 to provide that, subject to a number of 
conditions, a patent includes the right to obtain a reasonable royalty 
during the period beginning on the date of publication of the 
application for such patent under 35 U.S.C. 122(b) (or the date of 
publication under Patent Cooperation Treaty (PCT) Article 21(2) of an 
international application designating the United States) and ending on 
the date the patent is issued (``provisional rights'').
    Section 4505 of the American Inventors Protection Act of 1999 
amends 35 U.S.C. 102(e) to, inter alia, set forth the conditions under 
which an application published under 35 U.S.C. 122(b) or under PCT 
Article 21(2) is prior art as of its filing date.
    Section 4506 of the American Inventors Protection Act of 1999 
provides that the Office shall recover the cost of early publication 
required by 35 U.S.C. 122(b) by charging a separate publication fee 
after a notice of allowance is given under 35 U.S.C. 151.
    Section 4508 of the American Inventors Protection Act of 1999 
provides that its eighteen-month publication provisions take effect on 
November 29, 2000, and apply to applications (other than for a design 
patent) filed under 35 U.S.C. 111(a) on or after November 29, 2000, and 
to applications in compliance with 35 U.S.C. 371 that resulted from 
international applications filed under 35 U.S.C. 363 on or after 
November 29, 2000.
    The Office published a notice proposing changes to the rules of 
practice to implement the provisions of Secs. 4501 through 4508 
(Subtitle E, Domestic Publication of Patent Applications Published 
Abroad) of the American Inventors Protection Act of 1999. See Changes 
to Implement Eighteen-Month Publication of Patent Applications, Notice 
of Proposed Rulemaking, 65 FR 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. 
Office 121 (Apr. 25, 2000) (notice of proposed rulemaking). This final 
rule adopts changes to the rules of practice to implement the 
provisions of Secs. 4501 through 4508 of the American Inventors 
Protection Act of 1999.
    The Office's planning approach to eighteen-month publication 
includes: (1) Disseminating a publication document (patent application 
publication) for each published application; and (2) providing (under 
conditions set forth below) any member of the public with access to the 
file wrapper and contents of each published application (which may be 
limited to a copy of the file wrapper and contents of the application).
    Patent application publication: The patent application publication 
will include a front page containing information similar to that 
contained on the front page of a patent, and the drawings (if any) and 
specification (including claims) of the published application. To 
create the patent application publication, the Office plans to use its 
Patent Application Capture and Review (PACR) system to create an 
electronic database (PACR database) containing: (1) The application 
papers and drawings deposited on the filing date of the application; 
and (2) any subsequently filed application papers and drawings needed 
to create the patent application publication. The application 
information contained in the Office's PACR database will be used to 
create the patent application publication, unless the applicant 
provides a copy of the application via the Office's electronic filing 
system (EFS) to be used to create the patent application publication 
(discussed below).
    The Office currently uses the PACR database as the Office's record 
of the application papers submitted on the filing date of the 
application (i.e., the original disclosure of the invention). The 
application papers submitted on the filing date of the application, 
however, may not include the content needed

[[Page 57026]]

(e.g., an abstract), and the application papers or drawings may not be 
of sufficient quality (e.g., papers not having sufficient contrast to 
permit electronic capture by digital imaging and conversion to text by 
optical character recognition or drawings not having sufficient 
quality) to be used to create a patent application publication. Since 
the patent application publication will be a prior art document (and, 
in most cases, the prior art document having the earliest effective 
date under 35 U.S.C. 102(a), (b), and (e)), the Office must consider 
the usability of the patent application publication as a prior art 
document when determining what drawing quality is needed to create the 
patent application publication.
    If the application papers submitted on the filing date of the 
application do not include the content needed, or the application 
papers or drawings are not of sufficient quality to be used, to create 
a patent application publication, the Office of Initial Patent 
Examination (OIPE) will issue a notice requiring that the applicant 
submit the needed application content, or application papers or 
drawings of sufficient quality, for use in creating a patent 
application publication. The applicant's reply to that notice 
(application papers and drawings needed to create the patent 
application publication) will then be added to the PACR database. The 
Office must separate the application papers and drawings deposited on 
the filing date of the application and the subsequently filed 
application papers and drawings in its PACR database because the PACR 
database is also used to create any requested certified copy of the 
application (which may only include the application papers and drawings 
deposited on the filing date of the application).
    Initially, an application filed under 35 U.S.C. 111(a) 
(nonprovisional) must be entitled to a filing date (i.e., contains a 
written description of the invention, a drawing (if necessary for an 
understanding of the invention), and at least one claim) for the 
application to be in condition for publication. In addition, if an 
application filed under 35 U.S.C. 111(a) otherwise entitled to a filing 
date appears to omit a portion of the description or a drawing figure, 
the omitted portion of the description or drawing figure(s) must be 
supplied, or the period for supplying such portion of the description 
or drawing figure(s) must have expired, for the application to be in 
condition for publication. The requirements for an application filed 
under 35 U.S.C. 111(a) to be entitled to a filing date and the 
treatment of an application filed under 35 U.S.C. 111(a) that appears 
to omit a portion of the description or a drawing figure is set forth 
in sections 601.01(d) through 601.01(g) of the Manual of Patent 
Examining Procedure (7th ed. 1998) (Rev. 1, Feb. 2000) (MPEP).
    In addition, an application filed under 35 U.S.C. 111(a) must 
include an executed oath or declaration (Sec. 1.63), an abstract 
(Sec. 1.72(b)), and an English translation (if filed in a language 
other than English), for the application to have the content necessary 
to create the patent application publication. For eighteen-month 
publication purposes, the oath or declaration must at a minimum: (1) 
Name each inventor at least by a family and given name; and (2) be 
signed by each inventor or a party qualified to sign under Secs. 1.42, 
1.43, or 1.47 in compliance with Sec. 1.64. Finally, an application 
filed under 35 U.S.C. 111(a) will not be published until the basic 
filing fee (Sec. 1.16(a) or (g)) is paid.
    A PCT international application must satisfy the requirements of 35 
U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C. 
122(b) (and to have the content necessary to create the patent 
application publication).
    Even if an application has the content necessary to create the 
patent application publication, the application papers and drawings 
must also be reviewed to determine whether they are of sufficient 
quality to be used in creating the patent application publication. To 
be of sufficient quality to create the patent application publication, 
the specification must be on sheets of paper that: (1) Are flexible, 
strong, smooth, non-shiny, durable, and white; (2) are either A4 (21 cm 
 x  29.7 cm) or 8\1/2\"  x  11" with each sheet having a left margin of 
at least 2.5 cm (1") and top, bottom, and right margins of at least 2.0 
cm (\3/4\"); (3) are written on one side only in portrait orientation; 
(4) are plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; (5) have lines that 
are either 1\1/2\ or double-spaced; and (6) have sufficient clarity and 
contrast between the paper and the writing on the paper to permit 
direct reproduction and electronic capture by digital imaging and 
optical character recognition. These quality standards and requirements 
are currently set forth in Sec. 1.52(a) and (b). In addition, the title 
must meet the length requirement of Sec. 1.72(a); the abstract must 
commence on a separate sheet and meet the word-length requirement of 
Sec. 1.72(b); the claims must commence on a separate sheet; and the 
sequence listing (if applicable) must comply with Secs. 1.821 through 
1.825.
    As discussed above, the Office must consider not only whether 
drawings are of sufficient quality to create a publication (the patent 
application publication), but whether they are sufficient for the 
publication to be routinely used as a prior art document. Thus, the 
drawing sheets (if drawings are included) must comply with the 
following requirements of Sec. 1.84. Drawings must be done in dark ink 
(not pencil), except where color drawings or photographs are permitted. 
Photographs (or photomicrographs) are not permitted unless they are 
reproducible and the invention cannot be clearly illustrated in an ink 
drawing. See Interim Waiver of 37 CFR Sec. 1.84(b)(1) for Petitions to 
Accept Black and White Photographs and Advance Notice of Change to 
M.P.E.P. Sec. 608.02, Notice, 1213 Off. Gaz. Pat. Office 108 (Aug. 4, 
1998). Drawing sheets must be reasonably free from erasures and must be 
free from alterations, overwritings, interlineations, folds, and copy 
marks. Drawing sheets must be either 21.0 cm by 29.7 cm (DIN size A4) 
or 21.6 cm by 27.9 cm (8 \1/2\ by 11 inches). Each drawing sheet must 
include a top margin of at least 2.5 cm (1 inch), a left side margin of 
at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (\5/8\ 
inch), and a bottom margin of at least 1.0 cm (\3/8\ inch). Lines, 
numbers, and letters must be clean, dark (not of poor line quality), 
uniformly thick, and well defined. The English alphabet must be used 
for letters, except where another alphabet is customarily used (such as 
the Greek alphabet to indicate angles, wavelengths, and mathematical 
formulas). Numbers, letters, and reference characters must measure at 
least 0.32 cm (\1/8\ inch) in height. Lead lines are required for each 
reference character (except for those which indicate the surface or 
cross section on which they are placed, in which case the reference 
character must be underlined to make it clear that a lead line has not 
been left out by mistake). The drawing views must also be numbered in 
consecutive Arabic numerals, starting with 1.
    Finally, the specification (including the claims) must not contain 
drawings or flow diagrams. See Sec. 1.58(a).
    In September of 1996, the Office revised the standard and format 
requirements for the specification (including the abstract and claims), 
drawings, and other application papers set forth in Sec. 1.52 and 
Sec. 1.84 for the purpose of obtaining initial application papers in 
condition for eighteen-month publication. See Miscellaneous Changes in 
Patent Practice, Final Rule Notice, 61 FR 42790 (Aug. 19, 1996), 1190 
Off. Gaz.

[[Page 57027]]

Pat. Office 67 (Sept. 17, 1996). Applicants are advised that the Office 
will: (1) Begin enforcement of the provisions of Sec. 1.52(a) and (b) 
and Sec. 1.84 during the pre-examination processing of patent 
applications; and (2) not permit applicants to request that objections 
under Sec. 1.52(a) and (b) and Sec. 1.84 made during the pre-
examination processing of a patent application be held in abeyance 
pending allowance of the application.
    As discussed below, if applicant timely provides the Office with a 
copy of the application via the Office electronic filing system, the 
Office will use the electronic copy provided by the applicant (rather 
than the PACR database records) to create the patent application 
publication. Applicants may use this procedure to obtain inclusion of 
amendments submitted during prosecution in the patent application 
publication. Applicants must use this procedure when requesting: (1) 
Voluntary publication of an application; (2) republication of a 
previously published application; or (3) publication of only a redacted 
copy of an application.
    Electronic filing system: The electronic filing system (EFS) is an 
electronic system for the submission of patent applications to the 
Office. The EFS encompasses the preparation of the application parts in 
a special manner on the applicant's computer (authoring), the 
assembling of the pieces of the application so authored, and the secure 
communication of that application to the Office. The same EFS software 
must be used by applicants who wish to submit a copy of the application 
for the patent application publication.
    The steps for submission of an electronic version of a patent 
application are as follows: (1) Obtaining a digital certificate; (2) 
obtaining the authoring and the submission-software packages from the 
Office; (3) authoring the patent application; and (4) assembling the 
parts of the application, and validating, digitally signing, and 
submitting the application.
    To file a copy of an application using the EFS, an applicant (or 
representative) must submit a request and receive an Office digital 
certificate to enable secure communication between the applicant and 
the Office. A digital certificate will allow the authorized person to 
conduct electronic filing of one or more applications, as well as have 
access to the Office's Patent Application Information Retrieval (PAIR) 
software to display patent application status information.
    The digital certificate is given to individuals and firms that 
obtain a customer number, and also request a digital certificate. 
Instructions on how to obtain the necessary digital certificate are 
located at the Office's Electronic Business Center on the Office's 
Internet Web site (http://www.uspto.gov) (under the section Electronic 
Business Center, select New User for the PAIR system).
    The Office makes its branded version of the security software 
product called Entrust Direct software available to authorized persons. 
The software operates in conjunction with an Office Public Key 
Infrastructure (PKI) that is secure and enables communication only 
between the Office and authorized persons who are registered with the 
Office.
    A person signing up for EFS application filing receives a package 
with his or her digital certificate including: (1) the software that 
will attach a digital signature to a document or set of documents; (2) 
an authoring tool that will allow the applicant to convert a standard 
patent application into a specialized format; and (3) the electronic 
Packaging and Validation Engine (ePave) program that will assemble the 
parts of the application, validate that the parts are complete, encrypt 
and digitally sign them, and then send them to the Office.
    The applicant is responsible for correctly authoring the electronic 
application, which is defined as reformatting the application into a 
form that complies with the requirements of XML (the standard 
eXtensible Markup Language of Internet authoring). The XML requires 
that all the pieces of information in the application (e.g., the 
inventor's name, title of the invention, and the claims) are tagged 
with standard XML named tags before and after each piece of 
information. For example, XML could require that the title be tagged:

app title> MAKING A WIDGIT /app title>

    The tagged information, in turn, is ordered and positioned on the 
submitted document according to the formula for that document in the 
document type definition (DTD). The DTD contains a list of all the 
tagged data elements (pieces of information) that should be on that 
document, and the relative positioning of the elements. When combined 
with the document's style sheet (which contains formatting 
information), the DTD will completely define what the document should 
contain and, when printed or viewed, what it will look like.
    The applicant does the authoring using the software authoring tool 
given to him or her by the Office and operating on the applicant's 
computer. The authoring tool displays a template on applicant's 
computer screen listing all of the data elements that should be in a 
patent application (according to the Office's DTD). The applicant 
clicks in the desired data element and types information into the 
template. For example, the applicant clicks the data element ``TITLE'' 
and types ``MAKING A WIDGIT'' into the template. The authoring tool 
will add the tags, paragraph numbers, and other elements that are 
required by XML. The applicant can continue through this whole process 
adding the required information to each of the data elements in the 
template until the application is fully authored.
    The applicant can also use the authoring tool to ``cut and paste'' 
a previously written application into the proper format. In this mode, 
the applicant will open up that written application, and also open up 
the authoring tool template to reveal the data elements. When the 
applicant clicks in the data element, the applicant will copy the 
relevant section from the previously written application and paste that 
section into the template (for tagging by the authoring tool).
    Paper copies of the oath or declaration (Sec. 1.63), drawings, and 
certain other documents are scanned on the applicant's digital scanner 
and stored in tagged image file format (TIFF). The TIFF is not tagged 
by the authoring tool, but is similar to an electronic photograph.
    Using either mode, the applicant will produce a copy of the 
application in compliance with the Office EFS, including a 
specification and claims (in XML), an oath or declaration (in TIFF), 
and drawings (also in TIFF).
    Once the various parts of the application are prepared, the 
applicant will use the software tool ePave to assemble those parts and 
submit the application to the Office. The ePave software interacts with 
the applicant to fill out an electronic transmittal and fee information 
letter. This document is developed in the tagged XML format. The 
applicant then uses the ePave software to associate these documents 
with the previously produced application.
    This association of the related files to be submitted is called 
bundling. The bundle of files that will be sent to the Office will be 
compressed using Zip technology to reduce their size. Then ePave will 
apply the digital signature to the compressed bundle, to indicate who 
is sending the package to the Office, and check the file's integrity. 
The digital signature process also encrypts the bundle, for safety 
during transmission.

[[Page 57028]]

    The authoring tool and ePave software on the applicant's computer 
perform all of this activity almost invisibly. The applicant must enter 
a password to apply the digital signature, and the software will finish 
processing the application for submission to the Office. During the 
processing of a copy of an application for submission to the Office for 
use in a patent application publication, the applicant will be advised 
that the application of a digital signature constitutes a statement 
that the EFS copy of the application contains no new matter, and, 
except for a redacted copy of an application (which requires the 
concurrent submission of other certifications on paper), that the EFS 
copy of the application corresponds to the application as amended by 
any amendment filed in the application. When processing is finished, 
the software will ask the applicant if the list of displayed files 
should be sent to the Office. The applicant will click or otherwise 
express his or her concurrence, and the EFS application files are 
electronically transmitted to the Office.
    On receipt of the bundle of files comprising the application, the 
Office stores the bundle and takes it apart. The bundle is decrypted, 
the digital signature is checked, and the integrity of the package is 
confirmed. In the course of events, the Office sends an acknowledgment 
back to the applicant's computer providing the date and time of 
submission, the names and sizes of the files received, and other 
information to confirm the submission.
    Obviously, an application submitted via EFS cannot include a 
payment by check or money order. Therefore, any publication fee or 
processing fee required for a copy of an application submitted via EFS 
for use in the patent application publication must be paid by an 
authorization to charge the fee to a credit card or Office deposit 
account.
    The Office originally indicated that if a copy of an application 
being submitted to the Office for eighteen-month publication purposes 
contains a sequence listing, and the sequence listing is identical to a 
sequence listing previously submitted to the Office in compliance with 
Secs. 1.821 through 1.825, the EFS copy of the application may contain 
a reference to the previously filed sequence listing in lieu of a copy 
of the previously filed sequence listing. See Changes to Implement 
Eighteen-Month Publication of Patent Applications, 65 FR at 17950, 1233 
Off. Gaz. Pat. Office at 124. The Office, however, has determined that 
permitting an EFS copy of an application to reference a previously 
filed sequence listing (rather than include a copy of the sequence 
listing) will increase the chance for errors in the sequence listing 
included in the patent application publication. Thus, the Office is 
requiring that if a copy of an application being submitted to the 
Office for eighteen-month publication purposes contains a sequence 
listing, the EFS copy of the application must contain a text file copy 
of the sequence listing that if printed out on paper would be in 
compliance with Sec. 1.823.
    Finally, if the file containing a copy of an application being 
submitted to the Office for eighteen-month publication purposes 
occupies ten megabytes of memory or more, the copy of the application 
should be submitted on a Compact Disk-Read Only Memory (CD-ROM) or 
Compact Disk-Recordable (CD-R). The CD-ROM or CD-R containing the copy 
of the application should be addressed to: Box PGPub.
    While the Office is using EFS for both new application filing and 
submission of a copy of a previously filed application for publication 
purposes, an EFS submission of a copy of an application for publication 
purposes will be different from the EFS submission of a new 
application. For example, the EFS submission of a copy of an 
application for publication purposes will not require an oath or 
declaration (in TIFF). In addition, the acknowledgment receipts issued 
by the Office will be different for the EFS submission of a copy of an 
application for publication purposes than it will be for the EFS 
submission of a new application.
    Publication process: The current planning approach involves a 
fourteen-week publication cycle that results in the publication of 
patent application publications on Thursday of each week. Ideally, the 
publication date of an application will be the first Thursday after the 
date that is eighteen months after the filing date of the application, 
or if the application claims the benefit of an earlier filing date, the 
first Thursday after the date that is eighteen months after the 
earliest filing date for which a benefit is sought. An application, 
however, may not be published the first Thursday after the date that is 
eighteen months after the earliest filing date for which a benefit is 
sought if the application is not in condition for publication 
approximately fourteen months after the earliest filing date for which 
a benefit is sought (eighteen months less the fourteen-week publication 
cycle).
    Obviously, there are events that will delay publication of some 
applications until a later date: e.g., (1) The application claims the 
benefit under 35 U.S.C. 120 of an application filed more than eighteen 
months before the actual filing date of the application; (2) the basic 
filing fee or oath (or declaration) is not provided within eighteen 
months after the earliest filing date for which a benefit is sought; or 
(3) the application does not contain papers or drawings of publication 
quality within eighteen months after the earliest filing date for which 
a benefit is sought. In such situations, the publication date of an 
application will be the first Thursday after the date that is fourteen 
weeks after the application is in condition for publication. Applicants 
who attempt to delay publication by intentionally delaying the 
submission of the application content necessary for publication, 
however, may encounter a reduction in any patent term adjustment under 
35 U.S.C. 154(b) (see 35 U.S.C. 154(b)(2)(C)(ii) and Sec. 1.704(b)).
    The Office plans to indicate a projected publication date on the 
filing receipt or indicate ``to be determined'' if the application is 
not in condition for publication. If events change the projected 
publication date by more than two weeks (e.g., claim for priority under 
35 U.S.C. 119(e) presented after mailing of the filing receipt) or the 
application content necessary for publication is provided, the Office 
will issue a change notification indicating the revised projected 
publication date.
    The publication process involves producing weekly volumes of patent 
application publications on a variety of media: e.g., the Office's 
Examiner Automated Search Tool (EAST) and Web-based Examiner Search 
Tool (WEST) search systems, optical disk products for sale to the 
public, and exchange with the Office's Intellectual Property exchange 
partners. Patent application publications will be available for viewing 
by the public in the Public Search Room via an on-line search system. 
The Office does not plan to provide paper copies of the patent 
application publications for placement in either the Public Search Room 
or the examiners' search rooms. The Office, however, will provide paper 
copies of the patent application publications to any member of the 
public on request (for a fee) in the manner that paper copies of 
patents are currently provided.
    The publication process provides for: (1) Assembly of application 
bibliographic information for the patent application publication at 
fourteen weeks prior to the projected publication date; (2) assembly of 
the technical content (specification, including claims and abstract, 
and drawings) of the application for the patent application

[[Page 57029]]

publication at nine weeks prior to the projected publication date; and 
(3) placement of the application information as assembled into the 
patent application publication on publication media (e.g., optical 
disks, magnetic tape) at four weeks prior to the projected publication 
date.
    Any applicant seeking to abandon the application for the purpose of 
avoiding publication must take appropriate action (see Sec. 1.138 
discussed below) well prior to the projected publication date. If the 
application is not expressly abandoned at least four weeks prior to the 
projected publication date, the Office will probably not be able to 
avoid publication of the application or at least some application 
information because the Office will place the application (along with 
the thousands of other applications being published each week) on 
publication media (e.g., optical disks, magnetic tape) four weeks prior 
to the projected date. This does not imply that a request to expressly 
abandon an application to avoid publication (Sec. 1.138) filed prior to 
this ``four-week'' time frame will ensure that the Office will be able 
to remove an application from publication. The Office simply cannot 
ensure that it can remove an application from publication or avoid 
publication of application information any time after the publication 
process for the application is initiated.
    Access to the file wrapper and contents of a published application: 
The Office plans to permit: (1) Any member of the public to obtain (for 
a fee) a copy of the complete file wrapper and contents of, or a copy 
of a specific paper in, any published application, provided that no 
redacted copy was timely submitted for publication; (2) any member of 
the public to obtain (for a fee) an appropriately redacted copy of the 
file wrapper and contents of, or a copy of a specific paper in, any 
published application for which a redacted copy was timely submitted 
for publication; and (3) any member of the public to physically inspect 
(subject to the same conditions that apply to inspection of patented 
files) the file of any abandoned published application, provided that 
no redacted copy was timely submitted for publication.
    Any member of the public may obtain status information concerning 
any published application via the Office's PAIR system. Permitting 
physical inspection of pending published applications, however, would 
interfere with the Office's ability to act on the applications within 
the time frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the 
Office must limit public access to the file wrapper of pending 
published applications to obtaining a copy produced by the Office (for 
a fee) to avoid conferring patent term adjustment on the applicant due 
to actions by members of the public.
    Section 4805 of the American Inventors Protection Act of 1999 
provides that the Comptroller General (in consultation with the Office) 
shall conduct a study and submit a report to Congress on the potential 
risks to the United States biotechnology industry relating to 
biological deposits in support of biotechnology patents, and that the 
Office shall consider the recommendations of such study in drafting 
regulations affecting biological deposits (including any modification 
of Sec. 1.801 et seq.). Therefore, this notice does not contain any 
amendment to Sec. 1.801 et seq. concerning the treatment of biological 
deposits in applications subject to eighteen-month publication.
    Section 4732 of the American Inventors Protection Act of 1999 
changed (among other things) the title ``Commissioner'' to 
``Director.'' The title ``Commissioner,'' however, is not being changed 
to ``Director'' where it appears in the rules of practice involved in 
this final rule because legislation is pending before Congress that (if 
enacted) would restore the former title ``Commissioner.'' See 
Intellectual Property Technical Amendments Act of 2000, H.R. 4870, 
106th Cong. (2000).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1 and 5, are 
amended as follows:
    Section 1.9: Section 1.9(c) is amended to define a published 
application as used in 37 CFR chapter I to mean an application for 
patent which has been published under 35 U.S.C. 122(b).
    Section 1.11: Section 1.11(a) is amended to include the file of an 
abandoned published application (except if a redacted copy of the 
application was used for the patent application publication) among the 
files that are open to inspection by the public.
    Section 1.12: Section 1.12(a)(1) is amended to include the 
assignment records of a published patent application among the patent 
assignment records that are available to the public. Section 1.12(b) is 
amended to provide that the patent assignment records, digests, and 
indexes are available to the public unless they relate to pending or 
abandoned patent applications that have not been published under 35 
U.S.C. 122(b).
    Section 1.13: Section 1.13 is amended to include patent application 
publications among the records of the United States Patent and 
Trademark Office that are open to the public, and of which a copy 
(certified or uncertified) will be furnished (upon payment of the 
appropriate fee).
    Section 1.14: Section 1.14(a) is amended to generally maintain the 
confidentiality of applications that have not been published as a U.S. 
patent application publication (see 35 U.S.C. 122(b)) pursuant to 35 
U.S.C. 122(a). Status information is defined to include identification 
of whether the application has been published under 35 U.S.C. 122(b), 
as well as whether the application is pending, abandoned, or patented, 
and the application numerical identifier.
    Section 1.14(b) is amended to provide that status information may 
also be supplied when the application is referred to by its numerical 
identifier in a U.S. patent application publication as well as a U.S. 
patent or a published international application. Section 1.14(b) is 
also amended to provide that status information may be supplied for an 
application which claims the benefit of the filing date of an 
application for which status information may be supplied. As a result, 
the public will be able to obtain continuity data for applications that 
have been published as a U.S. patent application publication or as a 
U.S. patent.
    Section 1.14(c)(1) provides that a copy of an application-as-filed 
or a file wrapper and contents may be supplied where the appropriate 
fee is paid, and: (1) The application is incorporated by reference in a 
U.S. patent application publication or U.S. patent; or (2) the 
application is relied upon for priority under 35 U.S.C. 119(e) or 120 
in a U.S. patent application publication or U.S. patent.
    Section 1.14(c)(2) provides that copies of the file wrapper and 
contents of an application are available to the public when the 
application has been published as a U.S. patent application 
publication.
    Section 1.14(e) is amended to provide public access to an abandoned 
application that is referenced in a U.S. patent application 
publication, as well as a U.S. patent, or another application that is 
open to public inspection.
    Section 1.14(i) provides for greater access to international 
application files kept by the Office and applies to applications having 
an international filing date on or after November 29, 2000. 
Specifically, 35 U.S.C. 374 equates the publication under the PCT of an 
international application designating the U.S. to the publication of a 
U.S. application under 35 U.S.C. 122(b). After publication of an

[[Page 57030]]

application under 35 U.S.C. 122(b), the Office will make available 
copies of the application files and also allow for access to those 
files in accordance with Sec. 1.14(c) and (e), respectively. Therefore, 
after publication of an international application designating the U.S. 
under PCT Article 21, the Office will make available copies of, and 
allow access to, those international application files which are kept 
in the Office (the Home, Search, and Examination Copies) to the extent 
permitted under the PCT. Additionally, Sec. 1.14(i)(2) provides that 
copies of English language translations of international applications, 
which were published in a non-English language and which designated the 
U.S., and which have been submitted to the Office pursuant to 35 U.S.C. 
154(d)(4), will also be available to the public. Requests for copies 
of, or access to, an application file under Sec. 1.14(i) must be in the 
form of a written request and must include a showing that the 
international application has been published and that the U.S. was 
designated. Such a showing should preferably be in the form of the 
submission of a copy of the front page of the published international 
application. Additionally, requests for copies of international 
application files must also be accompanied by the appropriate fee.
    Section 1.14(j) is amended to provide that this section not only 
applies when the Office provides access to or copies of the 
application, but also when the Office provides access to or copies of a 
part of an application.
    Section 1.17: The heading of Sec. 1.17 is amended to include a 
reference to reexamination to clarify that the enumerated fees in 
Sec. 1.17 may also apply during reexamination proceedings, as well as 
to patent applications.
    Section 1.17(h) is amended to include a petition under 
Sec. 1.138(c) to expressly abandon an application to avoid publication 
among the petitions requiring the fee ($130) set forth in Sec. 1.17(h).
    Section 1.17(i) is amended to include processing a redacted copy of 
a paper submitted in the file of an application in which a redacted 
copy was submitted for the patent application publication (Sec. 1.217), 
processing a request for voluntary publication or republication of an 
application (Sec. 1.221), and processing a belated submission under 
Sec. 1.99 (Sec. 1.99(e)) to the processing services requiring the 
processing fee ($130) set forth in Sec. 1.17(i).
    Sections 1.17(l) and 1.17(m) are amended to set forth the fees for 
filing a petition under Sec. 1.137 for revival of a terminated 
reexamination proceeding (on the basis of unavoidable and unintentional 
delay). Section 1.17(l) is amended to reflect that its $110 petition 
fee ($55 for a small entity) is required for a petition under 
Sec. 1.137(a) to revive a terminated reexamination proceeding on the 
basis of an unavoidable failure of the patent owner to timely respond. 
Section 1.17(m) is amended to reflect that its $1,240 petition fee 
($620 for a small entity) is required for a petition under 
Sec. 1.137(b) to revive a terminated reexamination proceeding on the 
basis of an unintentional failure to timely respond. Note, however, 
that the newly enacted unintentional revival provisions of the American 
Inventors Protection Act of 1999 are not effective in any reexamination 
until November 29, 2000.
    Section 1.17(p) is amended to make its fee ($180) applicable to a 
third-party submission under Sec. 1.99, as well as an information 
disclosure statement under Sec. 1.97(c) or (d).
    Section 1.17(t) is added to set forth the surcharge ($1,240) for 
accepting an unintentionally delayed claim for priority under 35 U.S.C. 
119, 120, 121, or 365(a) or 365(c) (Secs. 1.55 and 1.78).
    Section 1.18: Section 1.18(d) is added to specify the publication 
fee ($300). In view of this addition to Sec. 1.18, the heading of 
Sec. 1.18 is also amended to refer to ``post-allowance (including 
issue) fees'' (instead of only ``issue fees'').
    Section 1.19: Section 1.19(a) is amended to provide that its $3 
(regular service), $6 (next business day delivery to Office Box), or 
$25 (expedited delivery by commercial delivery service) fee would also 
be applicable to a request for a copy of the paper portion of a patent 
application publication. The $25 fee set forth in Sec. 1.19(a)(4) would 
apply to a request for a certified copy of a patent application 
publication.
    Section 1.24: Section 1.24 is removed and reserved. The practice of 
using coupons to purchase, e.g., patents, statutory invention 
registrations, and trademark registrations, is inefficient compared to 
alternatives such as payment by credit card (especially for orders 
placed via the Internet). Coupons sold by the Office (before coupon 
practice is abolished) may still be used but cannot be redeemed.
    Section 1.52: Section 1.52(d) is amended to provide for 
nonprovisional applications and provisional applications filed in a 
language other than English. The provisions concerning the treatment of 
nonprovisional applications filed in a language other than English are 
revised for clarity, but otherwise remain unchanged (Sec. 1.52(d)(1)).
    Section 1.52(d)(2) provides that if a provisional application is 
filed in a language other than English, an English translation will not 
be required in the provisional application. Section 1.52(d)(2) also 
contains a reference to Sec. 1.78(a) concerning the requirements for 
claiming the benefit of the filing date of such a provisional 
application in a later filed nonprovisional application.
    Section 1.55: Section 1.55 is amended to implement the provisions 
of 35 U.S.C. 119(b) as amended by section 4503(a) of the American 
Inventors Protection Act of 1999, by providing: (1) A time period 
within which a claim for the benefit of a prior foreign application 
must be stated or waived; and (2) provisions for the acceptance of an 
unintentionally delayed submission of a claim to the benefit of a prior 
foreign application.
    Section 1.55(a) is amended to provide that: (1) In an original 
application filed under 35 U.S.C. 111(a) (other than a design 
application), the claim for priority must be presented during the 
pendency of the application, and within the later of four months from 
the actual filing date of the application or sixteen months from the 
filing date of the prior foreign application; (2) in an application 
that entered the national stage from an international application after 
compliance with 35 U.S.C. 371, the claim for priority must be made 
during the pendency of the application and within the time limit set 
forth in the PCT and the Regulations under the PCT; and (3) the claim 
for priority and the certified copy of the foreign application 
specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be 
filed before the patent is granted.
    Section 1.55(c) provides that any claim for priority under 35 
U.S.C. 119(a)-(d) or 365(a) not presented within the time period 
provided by Sec. 1.55(a) is considered to have been waived. Section 
1.55(c) also provides that if a claim to priority under 35 U.S.C. 
119(a)-(d) or 365(a) is presented after the time period provided by 
Sec. 1.55(a), the claim may be accepted if the claim identifying the 
prior foreign application by specifying its application number, 
country, and the day, month and year of its filing was unintentionally 
delayed. Section 1.55(c) also provides that a petition to accept a 
delayed claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) must be 
accompanied by: (1) The surcharge set forth in Sec. 1.17(t); and (2) a 
statement that the entire delay between the date the claim was due 
under Sec. 1.55(a)(1) and the date the claim was filed was 
unintentional, and that the Commissioner may require additional

[[Page 57031]]

information where there is a question whether the delay was 
unintentional.
    Section 1.72: Section 1.72(a) is amended to provide that the title 
of the invention may not exceed 500 characters in length. The title 
character number limitation is necessary to ensure that the title can 
be captured and recorded in the Office's Patent Application Locating 
and Monitoring (PALM) system. Section 1.72(a) is also amended to 
provide that characters that cannot be captured and recorded in the 
Office's automated information systems (e.g., PALM) may not be 
reflected in the Office's records in such systems or in documents 
created by the Office. Thus, if a title includes a character (images) 
that cannot be captured by PALM, that title will not appear in the 
Office's PALM records for that application, and may not be reflected in 
documents (e.g., a filing receipt, patent application publication, or 
patent) created by the Office.
    Section 1.76: Section 1.76 is amended to provide for the inclusion 
of assignee information in a new Sec. 1.76(b)(7). Section 1.76(b)(7) 
provides that: (1) assignee information includes the name (either 
person or juristic entity) and address of the assignee of the entire 
right, title, and interest in an application; and (3) the inclusion of 
this information on the application data sheet does not substitute for 
compliance with any requirement of 37 CFR part 3 to have an assignment 
recorded by the Office. Providing assignee information on the 
application data sheet is considered a request to include such 
information on the patent application publication, since there is no 
other reason for including such information on the application data 
sheet.
    Section 1.78: Section 1.78(a) is amended to implement the 
provisions of 35 U.S.C. 119(e) and 120 as amended by Sec. 4503(b) of 
the American Inventors Protection Act of 1999, by providing: (1) A time 
period within which a claim to the benefit of a prior nonprovisional or 
provisional application must be stated or waived; and (2) provisions 
for the acceptance of the unintentionally delayed submission of a claim 
to the benefit of a prior nonprovisional or provisional application.
    Section 1.78(a)(2) is amended to provide that (except for a 
continued prosecution application filed under Sec. 1.53(d)) any claim 
to the benefit of a nonprovisional application or international 
application must be made during the pendency of the application and 
within the later of four months from the actual filing date of the 
application or sixteen months from the filing date of the prior 
application. Section 1.78(a)(2) also provides that the failure to 
timely submit the reference required by 35 U.S.C. 120 and 
Sec. 1.78(a)(2) is considered a waiver of any benefit under 35 U.S.C. 
120, 121, or 365(c) to such prior application, but that the time period 
set forth in Sec. 1.78(a)(2) does not apply to an application for a 
design patent.
    Section 1.78(a)(2) also provides that if the application claims the 
benefit of an international application, the first sentence of the 
specification must include an indication of whether the international 
application was published under PCT Article 21(2) in English 
(regardless of whether benefit to such application is claimed in the 
application data sheet).
    Sections 1.78(a)(3) and 1.78(a)(4) are redesignated as 
Sec. 1.78(a)(4) and 1.78(a)(5), respectively.
    Section 1.78(a)(3) provides that if the reference required by 35 
U.S.C. 120 and Sec. 1.78(a)(2) is presented in a nonprovisional 
application after the time period provided by Sec. 1.78(a)(2), the 
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior 
filed copending nonprovisional application or international application 
designating the United States may be accepted if the reference 
identifying the prior application by application number or 
international application number and international filing date was 
unintentionally delayed. Section 1.78(a)(3) also provides that a 
petition to accept an unintentionally delayed claim under 35 U.S.C. 
120, 121, or 365(c) for the benefit of a prior filed copending 
application must be accompanied by: (1) The surcharge set forth in 
Sec. 1.17(t); and (2) a statement that the entire delay between the 
date the claim was due under Sec. 1.78(a)(2) and the date the claim was 
filed was unintentional, but the Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
    Section 1.78(a)(4) is amended to provide that, for a nonprovisional 
application to claim the benefit of a provisional application, the 
provisional application must be entitled to a filing date as set forth 
in Sec. 1.53(c), and the basic filing fee set forth in Sec. 1.16(k) 
must be paid within the time period set forth in Sec. 1.53(g).
    Section 1.78(a)(5) provides that any nonprovisional application 
claiming the benefit of a provisional application filed in a language 
other than English must (in addition to the reference required by 35 
U.S.C. 119(e) and Sec. 1.78(a)(5)) contain an English language 
translation of the non-English language provisional application and a 
statement that the translation is accurate. Section 1.78(a)(5) also 
provides any claim for the benefit of a provisional application and 
English language translation of a non-English language provisional 
application must be submitted during the pendency of the nonprovisional 
application, and within the later of four months from the actual filing 
date of the nonprovisional application or sixteen months from the 
filing date of the prior provisional application. Section 1.78(a)(5) 
also provides that the failure to timely submit the reference and 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) is 
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior 
provisional application.
    Section 1.78(a)(6) provides that if the reference or English 
language translation of a non-English language provisional application 
required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) is presented in a 
nonprovisional application after the time period provided by 
Sec. 1.78(a)(5), the claim under 35 U.S.C. 119(e) for the benefit of a 
prior filed provisional application may be accepted during the pendency 
of the nonprovisional application if the reference identifying the 
prior application by provisional application number and any English 
language translation of a non-English language provisional application 
were unintentionally delayed. Section 1.78(a)(6) also provides that a 
petition to accept an unintentionally delayed claim under 35 U.S.C. 
119(e) for the benefit of a prior filed provisional application must be 
accompanied by: (1) The surcharge set forth in Sec. 1.17(t); and (2) a 
statement that the entire delay between the date the claim was due 
under Sec. 1.78(a)(5) and the date the claim was filed was 
unintentional, but that the Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
    Section 1.84: Section 1.84(a)(2) is amended to provide that color 
drawings are not permitted in an application, or copy thereof, 
submitted under the Office electronic filing system. Section 1.84(a)(2) 
is also amended to provide that any petition to accept color drawings 
must include a black and white photocopy that accurately depicts, to 
the extent possible, the subject matter shown in the color drawing. 
Since Sec. 1.84(b) provides that color photographs will be accepted in 
utility patent applications if the conditions for accepting color 
drawings have been satisfied, the provisions and restrictions in 
amended Sec. 1.84(a)(2) would also apply to color photographs.
    Section 1.84(e) is amended to provide that photographs must be 
developed on

[[Page 57032]]

paper meeting the sheet-size requirements of Sec. 1.84(f) and the 
margin requirements of Sec. 1.84(g).
    Section 1.84(j) is amended to refer to the view suitable for the 
front page of the patent application publication and patent, rather 
than the view suitable for the Official Gazette, since the front page 
of the patent (and patent application publication) includes the 
information that is (or would be) included in the Official Gazette, and 
the Office does not plan on creating an Official Gazette for patent 
application publications. Section 1.84(j) is also amended to provide 
that: (1) One of the views should be suitable for inclusion on the 
front page of the patent application publication and patent as the 
illustration of the invention; and (2) applicant may suggest a single 
view (by figure number) for inclusion on the front page of the patent 
application publication and patent. Applicants should indicate in the 
application transmittal letter the figure number of the view suggested 
for inclusion on the front page of the patent application publication 
and patent. The Office, however, is not bound by applicant's 
suggestion.
    Section 1.85: Section 1.85(a) is amended to provide that a utility 
or plant application will not be placed on the files for examination 
until objections to the drawings have been corrected. As discussed 
above, these objections will concern deficiencies that must be 
corrected for the drawings to be of sufficient quality for use in 
creating a patent application publication. For example, the drawings 
must be reproducible and any text in the drawings must be in the 
English language. Since the Office plans to use the copy of the 
application (including the drawings) from its PACR database to create 
the patent application publication, the Office must require that new or 
corrected drawings correcting the objections to the drawings be filed 
before the application is released from OIPE and placed on the files 
for examination.
    Even if an applicant files the application with a request that the 
application not be published pursuant to 35 U.S.C. 122(b), the 
applicant may rescind that request at any time. See 35 U.S.C. 
122(b)(2)(B)(ii). In addition, at the time the Office is recording a 
copy of the application in its PACR database, the Office is not in a 
position to know whether the applicant will file an electronic filing 
system copy of the application for use in creating the patent 
application publication. Therefore, the Office must be prepared to 
create a patent application publication from its PACR database for each 
application and insist that objections to the drawings be corrected in 
all utility and plant applications before the application can be 
released from OIPE.
    Section 1.85(a) is also amended to provide that (except as provided 
in Sec. 1.215(c)) any patent application publication will not include 
drawings filed after the application has been placed on the files for 
examination. Thus, corrected drawings submitted after the application 
has been released from OIPE will not be added to the PACR database or 
used to create the patent application publication.
    Section 1.85(a) is also amended to provide that, unless applicant 
is otherwise notified in an Office action, objections to the drawings 
in a utility or plant application will not be held in abeyance, and a 
request to hold objections to the drawings in abeyance will not be 
considered a bona fide attempt to advance the application to final 
action (Sec. 1.135(c)). That is, if an Office action or notice contains 
an objection to the drawings (and does not expressly permit such 
objection to be held in abeyance) and the applicant's reply does not 
correct the objection, the applicant will be advised that the reply is 
non-responsive and given the remainder of the period set in the 
original Office action or notice (and not a new period under 
Sec. 1.135(c)) within which to correct the objection.
    Since design applications are not subject to the eighteen-month 
publication provisions of 35 U.S.C. 122(b), drawings in a design 
application will continue to be admitted for examination if the 
drawings meet the requirements of Sec. 1.84(e), (f), and (g) and are 
suitable for reproduction.
    Section 1.98: Section 1.98(a)(2)(i) is amended to also refer to 
U.S. patent application publications. Section 1.98(b) is amended to 
provide that each U.S. patent application publication listed in an 
information disclosure statement shall be identified by applicant, 
patent application publication number, and publication date.
    Section 1.99: Section 1.99(a) provides that a submission by a 
member of the public of patents or publications relevant to a pending 
published application will be entered in the application file if the 
submission complies with the requirements of Sec. 1.99 and the 
application is still pending when the submission and application file 
are brought before the examiner. The entry of such a submission does 
not mean that the patents or printed publications contained in the 
submission will be necessarily considered and cited by the examiner. If 
the examiner considers a patent or printed publication contained in the 
submission to be pertinent in determining patentability, the examiner 
will initial that patent or printed publication on the listing of the 
patents or publications submitted for consideration by the Office. 
Unless, however, a patent or publication in a submission under 
Sec. 1.99 is discussed during prosecution, the patent or publication 
will not be deemed to have been ``considered'' pursuant to the Office's 
Portola guidelines. See Guidelines for Reexamination of Cases in View 
of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. 
Cir. 1997), Notice, 64 FR 15346 (Mar. 31, 1999), 1223 Off. Gaz. Pat. 
Office 124 (June 22, 1999).
    Section 1.99(b) provides that a submission under Sec. 1.99 must 
identify the application to which it is directed by application number 
and include: (1) The fee set forth in Sec. 1.17(p); (2) a listing of 
the patents or publications submitted for consideration by the Office 
(including the date of publication of each patent or publication); (3) 
a copy of each listed patent or publication in written form or at least 
the pertinent portions; and (4) an English language translation of all 
the necessary and pertinent parts of any non-English language patent or 
publication in written form relied upon.
    Section 1.99(c) provides that a submission under Sec. 1.99 must be 
served upon the applicant in accordance with Sec. 1.248.
    Section 1.99(d) provides that a submission under Sec. 1.99 may not 
include any explanation of the patents or publications, or any other 
information, and that a submission under Sec. 1.99 is limited to ten 
total patents or publications. Section 1.99(d) also provides that the 
Office will dispose of such explanation or information if included in a 
submission under Sec. 1.99. The Office plans to review submissions 
under Sec. 1.99 (e.g., by a Supervisory Patent Examiner) to determine 
whether they are limited to patents and publications before the 
submission is placed in the file of the application and forwarded to 
the examiner, and to remove any explanations or information (other than 
patents and publications) from the submission before it is placed in 
the file of the application and forwarded to the examiner.
    Section 1.99(e) provides that a submission under Sec. 1.99 must be 
filed within two months from the date of publication of the application 
(Sec. 1.215(a)), or prior to the mailing of a notice of allowance 
(Sec. 1.311), whichever is earlier. Section 1.99(e) also provides

[[Page 57033]]

that any submission under Sec. 1.99 not filed within this period is 
permitted only when the patents or publications could not have been 
submitted to the Office earlier, and must also be accompanied by the 
processing fee set forth in Sec. 1.17(i). The phrase ``publication of 
the application (Sec. 1.215(a))'' means that republication of an 
application under Sec. 1.211 has no effect on (e.g., does not restart) 
the period specified in Sec. 1.99(e). Section 1.99(e) also provides 
that a submission by a member of the public to a pending published 
application that does not comply with the requirements of Sec. 1.99 
will be returned or discarded.
    Section 1.99(f) provides that the involvement of a member of the 
public in filing a submission under Sec. 1.99 ends with the filing of 
the submission.
    Section 1.103: Section 1.103 is amended to provide for deferred 
examination for up to three years from the earliest filing date for 
which a benefit is claimed under title 35, United States Code, at the 
request of the applicant. The Office previously proposed a ``deferred 
examination'' practice (in addition to the current suspension of action 
practices) to implement the Patent Business Goals. See Changes to 
Implement the Patent Business Goals, Advance Notice of Proposed 
Rulemaking, 63 FR 53498, 53516-17 (Oct. 5, 1998), 1215 Off. Gaz. Pat. 
Office 87, 104-05 (Oct. 27, 1998). The Office, however, did not proceed 
with proposing changes to Sec. 1.103 to implement a ``deferred 
examination'' practice. See Changes to Implement the Patent Business 
Goals, Notice of Proposed Rulemaking, 64 FR 53772, 53775 (Oct. 4, 
1999), 1228 Off. Gaz. Pat. Office 15, 18 (Nov. 2, 1999). The Office is 
now proceeding with changes to Sec. 1.103 to implement a ``deferred 
examination'' practice.
    Section 1.103(d) is added to provide for deferral of examination if 
the applicant requests deferred examination under Sec. 1.103(d) and 
pays the publication fee set forth in Sec. 1.18(d) and the processing 
fee set forth in Sec. 1.17(i). The following conditions must also be 
met: (1) the application must be filed on or after November 29, 2000 
(or be an application for which applicant requests voluntary 
publication), and be an original (i.e., non-reissue) utility or plant 
application filed under Sec. 1.53(b) (i.e., not a continued prosecution 
application under Sec. 1.53(d)) or an application resulting from entry 
of an international application into the national stage after 
compliance with Sec. 1.494 or Sec. 1.495; (2) the applicant must not 
have filed a nonpublication request under Sec. 1.213(a), or have filed 
a request under Sec. 1.213(b) to rescind a previously filed 
nonpublication request; (3) the application must be in condition for 
publication as provided in Sec. 1.211(c); and (4) the Office must not 
have issued either an Office action under 35 U.S.C. 132 or a notice of 
allowance under 35 U.S.C. 151.
    The reasons given for opposition to the October 1998 proposal 
concerning ``deferred examination'' were that: (1) The ``deferred 
examination'' of an application under an extended suspension of action 
and the publication of an application under such suspension of action 
would create uncertainty over legal rights; and (2) the publication 
provisions of such a suspension of action procedure amount to an 
eighteen-month publication system that is not authorized by 35 U.S.C. 
122. The Office is adopting its deferred examination proposal because: 
(1) Since the deferral of examination under Sec. 1.103(d) is limited to 
three years from the earliest filing date for which a benefit is 
claimed under title 35, United States Code, there will be no greater 
uncertainty over legal rights than currently exists under reissue or 
continuing application practice; and (2) 35 U.S.C. 122(b) now provides 
for eighteen-month publication of patent applications (with certain 
exceptions).
    Section 1.104: Section 1.104(a) is amended by eliminating the 
provisions concerning the circumstances under which an examiner will 
consider applications to be copending (Sec. 1.104(a)(5)). This material 
pertains only to internal instructions to examiners and is considered 
appropriate for inclusion in the MPEP rather than the rules of 
practice.
    Section 1.104(d) is amended to provide that if domestic (U.S.) 
patent application publications are cited by the examiner, their 
publication number, publication date, and the names of the applicants 
will be stated.
    Section 1.130: Section 1.130(a) is amended to refer to published 
applications (as well as patents). Specifically, Sec. 1.130 is also 
applicable to a rejection of a claim in an application or patent under 
reexamination based upon a patent application publication in the 
situation in which the application or patent under reexamination and 
the published application are currently owned by the same party.
    Section 1.131: Section 1.131(a) is amended to provide that: (1) The 
effective date of a U.S. patent, U.S. patent application publication, 
or international application publication under PCT Article 21(2) is the 
earlier of its publication date or the date that it is effective as a 
reference under 35 U.S.C. 102(e); and (2) prior invention may not be 
established under Sec. 1.131 if the rejection is based upon either a 
U.S. patent or a U.S. patent application publication of a pending or 
patented application to another or others which claims the same 
patentable invention as defined in Sec. 1.601(n).
    Section 1.132: Section 1.132 is revised to provide that when any 
claim of an application or a patent under reexamination is rejected or 
objected to, any evidence submitted to traverse the rejection or 
objection on a basis not otherwise provided for must be by way of an 
oath or declaration under this section. This adopts the long-standing 
policy that any oath or declaration not otherwise provided for is 
considered under Sec. 1.132. See MPEP 716.
    Section 1.132 as adopted does not provide that an oath or 
declaration may not be submitted under Sec. 1.132 to traverse a 
rejection if the rejection is based upon a U.S. patent or a U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in 
Sec. 1.601(n). If an oath or declaration is submitted under Sec. 1.132 
to traverse a rejection, and the rejection is based upon a U.S. patent 
or a U.S. patent application publication of a pending or patented 
application to another or others which claims the same patentable 
invention as defined in Sec. 1.601(n), the Office will consider on a 
case-by-case basis whether the oath or declaration may be considered 
sufficient to overcome the rejection, or whether the applicant will be 
required to establish priority of invention through an interference 
proceeding.
    Section 1.137: Section 1.137 is amended to: (1) Make its provisions 
applicable to the revival of a terminated reexamination proceeding; (2) 
provide for the revival of an application abandoned pursuant to 35 
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the 
filing of an application in a foreign country or under a multinational 
treaty; and (3) reorganize certain provisions for clarity.
    Section 1.137 (including its heading) is amended to provide for 
revival of ex parte reexamination proceedings terminated under 
Sec. 1.550(d), for revival of inter partes reexamination proceedings 
terminated under Sec. 1.957(b), or for revival of rejected claims 
terminated under Sec. 1.957(c) in an inter partes reexamination 
proceeding where further prosecution has been limited to claims found 
allowable at the time of the failure to respond. These changes to 
Sec. 1.137 were discussed in the notice of proposed rulemaking to

[[Page 57034]]

implement the optional inter partes reexamination provisions of the 
American Inventors Protection Act of 1999. See Rules to Implement 
Optional Inter Partes Reexamination Proceedings, Notice of Proposed 
Rulemaking, 65 FR 18154 (Apr. 6, 2000), 1234 Off. Gaz. Pat. Office 93 
(May 23, 2000).
    Specifically, Sec. 1.137(a) is amended to include revival of 
unavoidably terminated reexamination proceedings. The unavoidable delay 
provisions of 35 U.S.C. 133 are imported into and are applicable to 
reexamination proceedings by 35 U.S.C. 305 and 314. See In re Katrapat, 
6 USPQ2d 1863 (Comm'r Pats. 1988). Section 1.137(b) is amended to 
provide for revival of unintentionally terminated reexamination 
proceedings. The unintentional delay fee provisions of 35 U.S.C. 
41(a)(7) are imported into and are applicable to all reexamination 
proceedings by Sec. 4605 of the American Inventors Protection Act of 
1999. Note that these changes pertain to all reexaminations (i.e., both 
ex parte reexaminations filed under Sec. 1.510 and inter partes 
reexaminations filed under Sec. 1.913) and become effective on November 
29, 2000 (one year after enactment of the American Inventors Protection 
Act of 1999).
    The reconsideration provisions of Sec. 1.137 (formerly 
Sec. 1.137(d), and Sec. 1.137(e) as adopted) are amended to provide 
that extensions of time for requesting reconsideration of a decision 
dismissing or denying a petition requesting revival of a terminated 
reexamination proceeding under Sec. 1.137(a) or Sec. 1.137(b) must be 
filed under Sec. 1.550(c) for a terminated ex parte reexamination 
proceeding, or under Sec. 1.956 for a terminated inter partes 
reexamination proceeding.
    Section 1.137(f) provides for the revival of an application 
abandoned for failure to timely notify the Office of a foreign filing. 
As discussed above, if an applicant makes a request (nonpublication 
request) upon filing with the appropriate certifications, the 
application will not be published under 35 U.S.C. 122(b)(1). See 35 
U.S.C. 122(b)(2)(B)(i). An applicant who has made a nonpublication 
request but who subsequently files an application directed to the 
invention disclosed in the application filed in the Office in a foreign 
country, or under a multilateral international agreement, that requires 
eighteen-month publication, must notify the Office of such filing 
within forty-five days after the date of such filing, with the failure 
to timely provide such a notice to the Office resulting in abandonment 
of the application. See 35 U.S.C. 122(b)(2)(B)(iii). 35 U.S.C. 
122(b)(2)(B)(iii), however, also provides that an application abandoned 
as a result of the failure to timely provide such a notice to the 
Office is subject to revival if the ``delay in submitting the notice 
was unintentional.'' See id.
    35 U.S.C. 122(b)(2)(B)(iii) provides for revival only on the basis 
of unintentional delay, and not on the basis of unavoidable delay. 
Compare 35 U.S.C. 122(b)(2)(B)(iii) (``delay * * * was unintentional'') 
with 35 U.S.C. 111(a)(4) (``delay * * * was unavoidable or 
unintentional''). Therefore, Sec. 1.137(f) provides that a 
nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires eighteen-month publication may be revived only pursuant 
to Sec. 1.137(b). Section 1.137(f) also provides that the reply 
requirement of Sec. 1.137(c) is met by the notification of such filing 
in a foreign country or under a multinational treaty, but the filing of 
a petition under Sec. 1.137 will not operate to stay any period for 
reply that may be running against the application. Since the Office 
cannot ascertain whether an application is abandoned under 35 U.S.C. 
122(b)(2)(B)(iii), the Office may continue to process and examine the 
application until the applicant notifies the Office that the 
application is abandoned. Therefore, Sec. 1.137(f) provides that the 
filing of a petition under Sec. 1.137 to revive such an application 
will not operate to stay any period for reply that may be running 
against the application.
    Section 1.137 is also amended to locate the ``reply requirement'' 
provisions in Sec. 1.137(c), rather than include duplicative provisions 
concerning the reply requirement in each of Sec. 1.137(a) and (b). 
Thus, the terminal disclaimer provisions of Sec. 1.137(c), 
reconsideration provisions of Sec. 1.137(d), and provisional 
application provisions of Sec. 1.137(e) are moved to 
Sec. Sec. 1.137(d), 1.137(e), and 1.137(g), respectively. In addition, 
Sec. 1.137(c) also provides that in an application abandoned for 
failure to pay the publication fee, the required reply must include 
payment of the publication fee. Thus, even if an application abandoned 
for failure to pay the publication fee is being revived solely for 
purposes of continuity with a continuing application, the petition to 
revive under Sec. 1.137 must include payment of the publication fee 
(unless previously submitted).
    Section 1.137 is also amended to take into account the provisions 
of 35 U.S.C. 119(e)(3), which extend the pendency of a provisional 
application to the next succeeding secular or business day if the day 
that is twelve months after the filing date of the provisional 
application falls on a Saturday, Sunday, or Federal holiday within the 
District of Columbia.
    Section 1.138: Section 1.138(a) is amended to add ``or 
publication'' to clarify that a letter of express abandonment may not 
be recognized by the Office unless it is actually received by 
appropriate officials in time to act before the date of publication.
    Section 1.138(c) is added to provide for a petition for express 
abandonment to avoid publication. Section 1.138(c) provides that an 
applicant seeking to abandon an application to avoid publication of the 
application (see Sec. 1.211(a)(1)) must submit a declaration of express 
abandonment by way of a petition including the fee set forth in 
Sec. 1.17(h) in sufficient time to permit the appropriate officials to 
recognize the abandonment and remove the application from the 
publication process. The petition will be granted when it is recognized 
in sufficient time to avoid publication of application information and 
will be denied when it is not recognized in sufficient time to avoid 
publication of application information. This will avert the situation 
in which an applicant files a letter of express abandonment to avoid 
publication, the letter of express abandonment is not recognized in 
sufficient time to avoid publication, upon publication the applicant 
wishes to rescind the letter of express abandonment, and the Office 
cannot revive the application (once the letter of express abandonment 
is recognized) because the application was expressly and intentionally 
abandoned by the applicant.
    As discussed above, the publication process is a fourteen-week 
process, and the applicant should expect that the petition will not be 
granted and the application will be published in regular course unless 
such declaration of express abandonment and petition are received by 
the appropriate officials more than four weeks prior to the projected 
date of publication.
    Section 1.165: Section 1.165(b) is amended to provide that if plant 
application drawings include a color drawing or photograph, a black and 
white photocopy that accurately depicts, to the extent possible, the 
subject matter shown in the color drawing or photograph must be 
submitted.
    Section 1.211: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 
1.221 are added to provide for the pre-grant publication of 
applications under 35 U.S.C. 122(b).

[[Page 57035]]

    Section 1.211(a) provides that (with certain exceptions) each U.S. 
national application for patent filed in the Office under 35 U.S.C. 
111(a) and each international application in compliance with 35 U.S.C. 
371 will be published promptly after the expiration of a period of 
eighteen months from the earliest filing date for which a benefit is 
sought under title 35, United States Code.
    Section 1.211(a)(1) provides that the Office will not publish 
applications that are recognized as no longer pending. The phrase 
``recognized by the Office as no longer pending'' covers the situation 
in which the period for reply (either the shortened statutory period or 
the maximum extendable period for reply) to an Office action has 
expired, but the Office has not yet entered the change of status (to 
abandoned) of the application in the PALM system and mailed a notice of 
abandonment. An application will remain in the publication process 
until the PALM system indicates that the application is abandoned. 
Obviously, once the PALM system indicates that an application is 
abandoned, the Office will attempt to remove the application from the 
publication process and avoid dissemination of application information. 
How much dissemination of application information can be avoided 
depends upon how close it is to the publication date when the Office 
recognizes the application as abandoned. Unless an applicant has 
received a notice of abandonment, an applicant who wants to abandon the 
application to avoid publication must file a petition under 
Sec. 1.138(c) to expressly abandon the application and avoid 
publication. An applicant permitting an application to become abandoned 
(for failure to reply to an Office action) to avoid publication by 
passively waiting for the Office to recognize that the application has 
become abandoned must bear the risk that the Office will not recognize 
that the application has become abandoned and change the status of the 
application in the PALM system in sufficient time to avoid publication.
    Section 1.211(a)(2) provides that the Office will not publish 
applications that are national security classified (see Sec. 5.2(c)), 
subject to a secrecy order under 35 U.S.C. 181, or under national 
security review.
    Section 1.211(a)(3) provides that the Office will not publish 
applications that have issued as patents in sufficient time to be 
removed from the publication process. If the pre-grant publication 
process coincides with the patent issue process, the Office will 
continue with the pre-grant publication process until a patent actually 
issues. This is because there are many instances in which the Office 
mails a notice of allowance (Sec. 1.311) in an application but the 
application does not issue as a patent in regular course (abandonment 
due to failure to pay the issue fee, or withdrawal from issue either 
sua sponte by the Office or on petition of the applicant). Therefore, 
the Office will not discontinue the pre-grant publication process until 
a patent has actually issued. Since the Office cannot discontinue the 
pre-grant publication process during the last two weeks of the 
publication process, this will result in a few applications being 
issued as patents and subsequently being published as patent 
application publications. The Office will refund the publication fee 
(if paid) if the application is not published as a patent application 
publication, but will not refund the publication fee if the application 
is published as a patent application publication, even if it is 
published after the patent issues.
    Section 1.211(a)(4) also provides that the Office will not publish 
applications that were filed with a nonpublication request in 
compliance with Sec. 1.213(a).
    Section 1.211(b) provides that provisional applications under 35 
U.S.C. 111(b) shall not be published. Section 1.211(b) also provides 
that design applications under 35 U.S.C. chapter 16 and reissue 
applications under 35 U.S.C. chapter 25 shall not be published under 
Sec. 1.211. Provisional applications under 35 U.S.C. 111(b) and design 
applications under 35 U.S.C. chapter 16 are excluded from the pre-grant 
publication provisions of 35 U.S.C. 122(b). See 35 U.S.C. 
122(b)(2)(A)(iii) and (iv). Reissue applications under 35 U.S.C. 
chapter 25 are not maintained in confidence under 35 U.S.C. 122(a). See 
Sec. 1.11(b).
    Section 1.211(c) provides that the Office will not publish an 
application filed under 35 U.S.C. 111(a) until it includes the basic 
filing fee, an English translation if in a language other than English, 
and an executed oath or declaration. Section 1.211(c) also provides 
that publishing may be delayed until the application includes a 
specification having papers in compliance with Sec. 1.52 and an 
abstract (Sec. 1.72(b)), drawings in compliance with Sec. 1.84, and a 
sequence listing in compliance with Sec. 1.821 through 1.825 (if 
applicable), and until any petition under Sec. 1.47 is granted. That 
is, if an application does not contain the application content on 
papers or drawings of sufficient quality to create a patent application 
publication by eighteen months from its earliest claimed filing date, 
the Office will publish the application as soon as practical after 
these deficiencies are corrected.
    Section 1.211(d) provides that the Office may refuse to publish an 
application, or to include a portion of an application in the patent 
application publication (Sec. 1.215), if publication of the application 
or portion thereof would violate Federal or state law, or if the 
application or portion thereof contains offensive or disparaging 
material. A similar provision exists in PCT practice, in that the 
International Bureau (IB) may omit expressions or drawings in an 
international application from its publications if the expressions or 
drawings are contrary to morality or public order, or contain 
disparaging statements. See PCT Article 21(6) and Rule 9.
    Section 1.211(e) provides that the publication fee set forth in 
Sec. 1.18(d) must be paid in each application published under this 
section before the patent will be granted, but does not require that 
the publication fee be paid prior to publication. If an application is 
subject to publication under this section, the sum specified in the 
notice of allowance under Sec. 1.311 will also include the publication 
fee which must be paid within three months from the date of mailing of 
the notice of allowance to avoid abandonment of the application. This 
three-month period is not extendable. If the application is not 
published under this section, the publication fee (if paid) will be 
refunded.
    Section 1.213: Section 1.213 implements the provisions of 35 U.S.C. 
122(b)(2)(B)(i)-(iii). An applicant may request that the application 
not be published under 35 U.S.C. 122(b) and Sec. 1.211 if the invention 
disclosed in an application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing. Section 1.213(a) requires that a request 
that an application not be published under 35 U.S.C. 122(b) 
(nonpublication request) must: (1) Be submitted with the application 
upon filing; (2) state in a conspicuous manner that the application is 
not to be published under 35 U.S.C. 122(b); (3) contain a certification 
that the invention disclosed in the application has not been and will 
not be the subject of an application filed in another country, or under 
a multilateral agreement, that requires publication at eighteen months 
after filing; and (4) be signed in compliance with Sec. 1.33(b). The 
requirement that a nonpublication request be submitted ``upon filing'' 
is a requirement of statute

[[Page 57036]]

(35 U.S.C. 122(b)(2)(B)(i)), and, as such, the Office must deny any 
petition requesting a waiver of this provision of Sec. 1.213(a).
    Section 1.213(b) provides that the applicant may rescind a 
nonpublication request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). 
Section 1.213(b) also provides that a request to rescind a 
nonpublication request under Sec. 1.213(a) must: (1) Identify the 
application to which it is directed (Sec. 1.5); (2) state in a 
conspicuous manner that the request that the application is not to be 
published under 35 U.S.C. 122(b) is rescinded; and (3) be signed in 
compliance with Sec. 1.33(b). Once a request under Sec. 1.213(b) to 
rescind a nonpublication request is filed and processed by the Office, 
the application will be scheduled for publication in accordance with 
Sec. 1.211(a).
    Section 1.213(c) reiterates the provisions of 35 U.S.C. 
122(b)(2)(B)(iii). Section 1.213(c) specifically states that if an 
applicant who has submitted a nonpublication request under 
Sec. 1.213(a) subsequently files an application directed to the 
invention disclosed in the application in which the nonpublication 
request was submitted in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing, the applicant must notify the Office of 
such filing within forty-five days after the date of the filing of such 
foreign or international application. The failure to timely notify the 
Office of the filing of such foreign or international application shall 
result in abandonment of the application in which the nonpublication 
request was submitted. See 35 U.S.C. 122(b)(2)(B)(iii).
    Section 1.215: Section 1.215(a) indicates that the publication of 
an application under 35 U.S.C. 122(b) shall include a patent 
application publication. The Office will not mail a paper copy of the 
patent application publication to the applicant, but will mail a notice 
to the applicant indicating that the application has been published.
    Section 1.215(a) also provides that the date of publication shall 
be indicated on the patent application publication.
    Section 1.215(a) also provides that (except as discussed below in 
Sec. 1.215(c)) the patent application publication will be based upon 
the application papers deposited on the filing date of the application, 
except for preliminary amendments, as well as the executed oath or 
declaration submitted to complete the application, and any application 
papers or drawings submitted in reply to a preexamination notice 
requiring a title and abstract in compliance with Sec. 1.72, 
application papers in compliance with Sec. 1.52, drawings in compliance 
with Sec. 1.84, or a sequence listing in compliance with Secs. 1.821 
through 1.825. That is, the patent application publication will not 
reflect the application as it was amended during the examination 
process, but will only reflect the application as recorded in the 
Office's PACR database.
    Section 1.215(b) provides a mechanism by which applicants may have 
assignee information (the name and address of the assignee of the 
entire right, title, and interest in an application) included on the 
patent application publication. To have assignee information included 
on the patent application publication, the applicant must include the 
assignee information on the application transmittal sheet or the 
application data sheet under Sec. 1.76. Providing assignee information 
on the application transmittal sheet or the application data sheet will 
be treated as an indication that the assignee information is being 
provided for inclusion on the patent application publication. Providing 
assignee information on the application transmittal sheet or the 
application data sheet does not substitute for compliance with any 
requirement of 37 CFR part 3 to have an assignment recorded by the 
Office.
    If applicant wants to submit assignee information for inclusion on 
the patent application publication after filing (i.e., after the 
application transmittal sheet or the application data sheet has been 
filed), applicant must file a supplemental application data sheet 
(Sec. 1.76) containing the assignee information. This applies to 
changes to previously submitted assignee information, as well as 
assignee information being provided for the first time. Nevertheless, 
assignee information may not be included on the patent application 
publication unless this information is provided on the application 
transmittal sheet or application data sheet included with the 
application on filing.
    Section 1.215(c) provides a mechanism by which applicants may have 
the patent application publication reflect the application as amended 
during the examination process (rather than the application information 
as recorded in the Office's PACR database). Section 1.215(c) provides 
that the Office will use an applicant-supplied copy of the application 
(specification, drawings, and oath or declaration), provided that: (1) 
The copy is in compliance with the Office electronic filing system 
(EFS) requirements; and (2) the EFS copy is filed within one month of 
the actual filing date of the application or fourteen months of the 
earliest filing date for which a benefit is sought, whichever is later.
    The fourteen-month period differs from the sixteen-month period 
provided in Sec. 1.217 for submitting a redacted copy of an application 
because the sixteen-month period provided in Sec. 1.217 is not based 
upon the fourteen-week publication cycle but is provided for by statute 
(35 U.S.C. 122(b)(2)(B)(v)).
    Section 1.215(d) provides that if the copy of the application does 
not comply with the Office EFS requirements, the Office will publish 
the application based upon the application records in the Office's PACR 
database (as provided in Sec. 1.215(a)). If, however, the Office has 
not started the publication process, the Office may use an untimely 
filed copy of the application supplied by the applicant under 
Sec. 1.215(c) in creating the patent application publication.
    Section 1.217: Section 1.217(a) implements the provisions of 35 
U.S.C. 122(b)(2)(B)(v), and provides that if an applicant has filed 
applications in one or more foreign countries, directly or through a 
multilateral international agreement, and such foreign-filed 
applications or the description of the invention in such foreign-filed 
applications is less extensive than the application or description of 
the invention in the application filed in the Office, the applicant may 
submit a redacted copy of the application filed in the Office for 
publication, eliminating any part or description of the invention that 
is not also contained in any of the corresponding applications filed in 
a foreign country. Section 1.217(a) also provides that the Office will 
publish the application as provided in Sec. 1.215(a) unless the 
applicant files a redacted copy of the application in compliance with 
Sec. 1.217 within sixteen months after the earliest filing date for 
which a benefit is sought under title 35, United States Code. This 
sixteen-month period is provided by statute (35 U.S.C. 
122(b)(2)(B)(v)), and as such, requests for waiver of this sixteen-
month period will be denied.
    As discussed above, this sixteen-month period provided in 
Sec. 1.217 differs from the fourteen-month period provided in 
Sec. 1.215(c) because the sixteen-month period provided in Sec. 1.217 
is not based upon the fourteen-week publication cycle but is provided 
for by statute (35 U.S.C. 122(b)(2)(B)(v)). If a redacted copy of an 
application is submitted in compliance with Sec. 1.217 but later than 
four months prior to the projected publication date, the Office will be 
required to reprocess the patent

[[Page 57037]]

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

[[Page 57038]]

    Section 1.221(b) provides that the Office will grant a request for 
a corrected or revised patent application publication other than as 
provided in Sec. 1.221(a) only when the Office makes a material mistake 
which is apparent from Office records. The phrase ``material mistake'' 
means a mistake that affects the public's ability to appreciate the 
technical disclosure of the patent application publication or determine 
the scope of the provisional rights that an applicant may seek to 
enforce upon issuance of a patent (e.g., error in the claims, serious 
error in a portion of the written description or drawings that is 
necessary to support the claims). The Office will permit applicants to 
review the bibliographic information contained in the Office's PALM 
database via its PAIR system. Therefore, applicants are expected to 
review that information and bring errors to the Office's attention at 
least fourteen weeks before the projected date of publication. Section 
1.221(b) also provides that any request for a corrected or revised 
patent application publication other than as provided in Sec. 1.221(a) 
must be filed within two months from the date of the patent application 
publication, and that this period is not extendable.
    Section 1.291: Section 1.291(a)(1) implements the provisions of 35 
U.S.C. 122(c), which specify that the Office shall establish 
appropriate procedures to ensure that no protest or other form of pre-
issuance opposition to the grant of a patent may be initiated after 
publication of the application without the applicant's express written 
consent. Section 1.291 is amended to provide that a protest must be 
submitted prior to the date the application was published or the 
mailing of a notice of allowance under Sec. 1.311, whichever occurs 
first.
    Section 1.292: Section 1.292(b)(3) is amended to require that any 
petition to institute a public use proceeding be submitted prior to the 
date the application was published or mailing of a notice of allowance 
under Sec. 1.311, whichever occurs first.
    Section 1.311: Section 1.311(a) is amended to provide that the sum 
specified in the notice of allowance may (in addition to the issue fee) 
also include the publication fee, in which case the issue fee and 
publication fee (Sec. 1.211(f)) must both be paid within three months 
from the date of mailing of the notice of allowance to avoid 
abandonment of the application. Section 1.311(a) is also amended to 
provide that this three-month period is not extendable. Section 
1.311(b) is amended to provide that an authorization to charge any of 
the post-allowance fees set forth in Sec. 1.18 to a deposit account may 
be filed in an individual application only after mailing of the notice 
of allowance.
    Section 1.417: Section 1.417 is added to provide for the submission 
of international publications or English language translations of 
international applications pursuant to 35 U.S.C. 154(d)(4). This 
section sets forth the requirements for the filing of an English 
language international publication or translation of an international 
application in order to ensure proper handling by the Office. Section 
1.417 provides that such a submission must clearly identify the 
international application to which it pertains under Sec. 1.5(a), and 
unless it is being submitted pursuant to Sec. 1.494 or Sec. 1.495, must 
be clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4). 
Failure to properly identify such submissions will result in the 
English language international publication or translation of the 
international application being processed as the filing of a national 
application under 35 U.S.C. 111(a). Additionally, failure to properly 
identify the international publication or translation as a submission 
under 35 U.S.C. 154(d)(4) may cause the Office to be unable to properly 
track or retrieve the international publication or translation in 
relation to its international application number. Section 1.417 also 
provides that such submissions should be marked ``Box PCT.''
    The submission of an international publication or translation of an 
international application for the purposes of national stage entry in 
accordance with Sec. 1.494 or Sec. 1.495 may also be relied upon as the 
submission for the purposes of 35 U.S.C. 154(d)(4). Likewise, an 
earlier filed international publication or translation (submitted for 
the purposes of 35 U.S.C. 154(d)(4) and properly identified as such) 
may also be relied upon for the purpose of satisfying the requirement 
of 35 U.S.C. 371(c)(2). If applicant intends to rely on such an earlier 
filed international publication or translation, the submission of 
documents under Sec. 1.494(f) and Sec. 1.495(g) should include an 
indication that the international publication or translation has been 
previously submitted for the purposes of 35 U.S.C. 154(d)(4) to avoid 
the mailing of either a Notice of Abandonment (PCT/DO/EO/909) 
indicating that a copy of the international application was not timely 
filed, or a Notice of Missing Requirements (PCT/DO/EO/905) indicating 
that a translation of the international application is required. While 
(as discussed above) applicants may rely on an earlier filed 
international publication or translation for the purposes of national 
stage entry and processing, the Office strongly recommends that a 
second copy of the international publication or translation be included 
with the initial national stage papers in order to ensure the integrity 
of the first submitted international publication or translation. 
Otherwise, processing of the national stage application may result in 
the alteration of the originally filed international publication or 
translation through, e.g., the entry of amendments.
    Section 1.494: Section 1.494(f) is amended to exempt a copy of the 
international publication or translation of the international 
application identified as provided in Sec. 1.417 from the documents 
that must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371 to avoid being considered a submission under 
35 U.S.C. 111(a).
    Section 1.495: Section 1.495(g) is amended to exempt a copy of the 
international publication or translation of the international 
application identified as provided in Sec. 1.417 from the documents 
that must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371 to avoid being considered a submission under 
35 U.S.C. 111(a).
    Part 5:
    Section 5.1: Section 5.1(e) is amended to implement the provisions 
of 35 U.S.C. 122(d), which specify that the application will not be 
published under 35 U.S.C. 122(b)(1) if publication or disclosure of the 
application would be detrimental to national security. Section 5.1(e) 
provides that an application under national security review will not be 
published at least until six months from its filing date or three 
months from the date the application was referred to a defense agency, 
whichever is later. These are the current national security review 
screening time frames for foreign filing license purposes. Section 
5.1(e) also provides that a national security classified patent 
application will not be published under Sec. 1.211 of this chapter or 
allowed under Sec. 1.311 of this chapter until the application is 
declassified and any secrecy order under Sec. 5.2(a) has been 
rescinded.

Response to Comments

    The Office received twenty-one written comments (from Intellectual 
Property Organizations, Businesses, Law Firms, Patent Practitioners, 
and others) in response to the notice of proposed rulemaking. Comments 
generally in support of a change are not discussed. The comments and 
the Office's

[[Page 57039]]

responses to the remaining comments follow:
    Comment 1: One comment questioned whether the Office will withdraw 
its reservation under PCT Article 64(3), which provides for no 
publication of an international application at eighteen months if only 
the United States is designated. The comment also questioned whether 
the Office will revise its declaration under PCT Article 64(4)(c) in 
view of the amendment to 35 U.S.C. 102(e).
    Response: The Office's reservation under PCT Article 64(3) and 
declaration under PCT Article 64(4)(c) are not germane to the proposed 
changes to the rules of practice to implement the eighteen-month 
publication provisions of the American Inventors Protection Act of 
1999. The Office will make the appropriate revisions to its reservation 
under PCT Article 64(3) and declaration under PCT Article 64(4)(c) in 
due course.
    Comment 2: One comment questioned whether a published English 
language international application designating the United States is 
considered a published application under Sec. 1.9(b).
    Response: An English language international application designating 
the United States and published under PCT Article 21(2) is not an 
application for patent which has been published under 35 U.S.C. 122(b). 
Thus, a published English language international application 
designating the United States is not considered a published application 
for purposes of Sec. 1.9(b).
    Comment 3: One comment suggested that the Office should not provide 
copies of the file wrapper and contents of published applications 
because 35 U.S.C. 122(b) allows for publishing an application, but not 
disclosing the entire content of an application file.
    Response: 35 U.S.C. 122(b) provides that ``[n]o information 
concerning published patent applications shall be made available to the 
public except as the Director determines,'' and that 
``[n]otwithstanding any other provision of law, a determination by the 
Director to release or not to release information concerning a 
published patent application shall be final and nonreviewable.'' See 35 
U.S.C. 122(b)(1)(B) and (C). Therefore, the Office has the authority to 
disclose, or refuse to disclose, information contained in the file 
wrapper contents of a published application as the Office deems 
appropriate.
    Comment 4: Several comments suggested that the Office should not 
provide copies of the file wrapper and contents of pending applications 
at all or until such time as the Office can produce such a copy from an 
electronic copy (rather than the physical application file). The 
comments argue that removing the application file wrapper for copying 
will result in disruption of the examination process and the loss or 
corruption of a number of application files.
    Response: The Office is cognizant of the fact that providing copies 
of the file wrapper and contents of a pending published application to 
any member of the public on request (and payment of a fee) has the 
potential to disrupt the examination process or result in corruption of 
the application file. If fulfilling copy orders for the file wrapper 
and contents of pending published applications proves to be 
unmanageable, the Office will revise Sec. 1.14 to require a member of 
the public requesting a copy of the file wrapper and contents of a 
pending published application to show cause to obtain such a copy.
    Comment 5: One comment suggested that Sec. 1.14(b)(2) should be 
limited to those international applications that designate the United 
States.
    Response: The suggested revision has not been adopted. For some 
time, the Office has revealed status information for any U.S. 
application identified in any published patent document, regardless of 
whether the document is a foreign patent (e.g., a Japanese patent or a 
German patent) or an international application. The only change 
intended by Sec. 1.14(b)(2) is to make the meaning of ``published 
patent document'' more clear by adding the parenthetical expression 
``e.g., a U.S. patent, a U.S. patent application publication, or an 
international application publication.''
    Comment 6: One comment contained a number of suggestions and 
questions on Sec. 1.14(i): (1) PCT Article 38 does not give the Office 
the authority to provide access to the examination and search files of 
a PCT application as provided in Sec. 1.14(i)(1); (2) how the public 
would know that an English translation has been filed 
(Sec. 1.14(i)(2)); (3) whether Sec. 1.14(i)(3) requires that the 
applicant have entered the national stage under 35 U.S.C. 371 (and what 
file would be available if no United States file wrapper has been 
prepared); and (4) Sec. 1.14(i)(5) appears to be in conflict with 
Sec. 1.14(i)(1)(iii).
    Response: Article 38 prohibits direct access to the examination 
file of an international application by a third party. Section 
1.14(i)(1) concerns the situation in which the United States acted as 
the International Preliminary Examining Authority (IPEA), the United 
States was elected, and the International Preliminary Examination 
Report (IPER) has issued. PCT Rule 94 provides authority for the Office 
to provide copies in these situations. PCT Rule 94.2 provides that 
after issuance of the IPER, the IPEA shall provide copies of the 
examination file (or any part thereof) to the elected offices upon 
request, and Rule 94.3 allows the elected offices to provide access to 
any document in its files. Therefore, upon receipt of a request under 
Sec. 1.14(i)(1) by a third party for a copy of an examination file in 
an international application that satisfies the requirements of 
Sec. 1.14(i)(1)(iii), the United States Elected Office will request 
that the United States IPEA make a copy of its examination file, and 
the United States Elected Office will then provide a copy of such file 
to the requesting party.
    The Office will not provide general notification to the public of 
the filing of translations under 35 U.S.C. 154. Under 35 U.S.C. 154, it 
is the responsibility of the applicant to notify any possible 
infringers for the purpose of obtaining provisional rights.
    Section 1.14(i)(3) does not require that the applicant have entered 
the national stage under 35 U.S.C. 371. Section 1.14(i)(3) concerns 
access to international application home and search files (access to 
the examination files being prohibited by Sec. 1.14(i)(5)).
    Sections 1.14(i)(1)(iii) and 1.14(i)(5) are not in conflict. 
Section 1.14(i)(1)(iii) concerns the situations in which the United 
States acted as the International Preliminary Examining Authority 
(IPEA), the United States was elected, and the International 
Preliminary Examination Report (IPER) has issued (as discussed above). 
Section Sec. 1.14(i)(5) concerns direct access to the examination files 
which is prohibited by PCT Article 38.
    Comment 7: One comment suggested that the phrase ``may be 
provided'' in Sec. 1.14(c)(1), (c)(2), and (e) should be changed to 
``will be provided'' for consistency with Sec. 1.13. Another comment 
suggested that Sec. 1.14(c)(1) and (c)(2) be clarified as to what (the 
application-as-filed or the entire contents of the file wrapper) may be 
supplied, and whether the phrase ``may be provided'' is intended to 
mean that supplying such is optional or discretionary on the part of 
the Office.
    Response: The suggestion has not been adopted. The phrase ``may 
be'' is used throughout Secs. 1.11, 1.12, and 1.14 and is retained in 
Sec. 1.14 for consistency and because ``may be'' is the appropriate 
terminology. For example, Sec. 1.14(c)(2) provides that a copy of the 
specification, drawings, and all papers related to a published patent 
application may be

[[Page 57040]]

provided if a written request with the appropriate fee are filed. The 
requested copy will normally be provided, but if the file is not 
available because it is being reviewed by a patent examiner or is at 
the publishing contractor for printing a patent, the requested copy may 
be only provided at a delayed date. Furthermore, in the rare event that 
the file is lost (and a replacement copy cannot be obtained), the 
requested copy cannot be made and will not be provided.
    Comment 8: Several comments suggested that the surcharge for the 
unintentionally delayed submission of a priority claim was excessive. 
One comment suggested that this surcharge be a nominal ($5) charge or 
in line with the publication fee ($300).
    Response: If a significant number of unintentionally delayed claims 
under 35 U.S.C. 119, 120, 121, or 365(a) or (c) are presented, the 
Office will have difficulty scheduling applications for publication. 
Thus, the surcharge amount must be sufficient to provide an incentive 
for applicant to exercise care to ensure that any desired claim under 
35 U.S.C. 119, 120, 121, or 365(a) or (c) is timely presented. The 
proposed surcharge amount tracks the fee amount for a petition to 
revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)), 
and this fee amount is considered an appropriate surcharge for a 
petition to accept an unintentionally delayed claim under 35 U.S.C. 
119, 120, 121, or 365(a) or (c). Since the fiscal year 2001 fee amount 
for a petition to revive an unintentionally abandoned application (35 
U.S.C. 41(a)(7)) is $1,240 (Sec. 1.17(m)), this fee amount ($1,240) is 
considered an appropriate surcharge for a petition to accept an 
unintentionally delayed claim under 35 U.S.C. 119, 120, 121, or 365(a) 
or (c) (Sec. 1.17(t)).
    Comment 9: Several comments suggested that the $300 publication fee 
was excessive. One comment argued that a publication fee should not be 
imposed on applicants who do not want publication but do not meet the 
requirements to request nonpublication under Sec. 1.213. Several 
comments suggested that the publication fee (cost) be included in the 
other application (filing or issue) fees. One comment suggested that 
the publication fee be reduced by fifty percent for small entities. 
Another comment suggested that Sec. 4506 of the American Inventors 
Protection Act of 1999 did not authorize the Office to charge a 
publication fee in those situations in which an application is issued 
as a patent and subsequently published as a patent application 
publication.
    Response: Section 4506 of the American Inventors Protection Act of 
1999 requires the Office to ``recover the cost of early publication 
required by the amendment [to 35 U.S.C. 122] by charging a separate 
publication fee.'' Section Sec. 4506 of the American Inventors 
Protection Act of 1999 does not provide for the Office to: (1) Not 
charge the publication fee to those applicants who would prefer not to 
have their applications published under 35 U.S.C. 122(b); (2) build the 
cost of publication into other application (filing or issue) fees; or 
(3) apply the small entity discount (which otherwise applies only to 
fees under 35 U.S.C. 41(a) or (b)) to the publication fee (cf. 35 
U.S.C. 132(b)). Finally, even when an application is issued as a patent 
and subsequently published as a patent application publication (because 
it issues too late in the publication process to stop publication), the 
cost of such a publication is part of the cost of early publication 
required by 35 U.S.C. 122(b), and Sec. 4506 of the American Inventors 
Protection Act of 1999 directs the Office to also recover that cost by 
charging a separate publication fee.
    Comment 10: A comment supporting the changes to Secs. 1.52(d) and 
1.78(a)(5) concerning the translation requirement for a non-English 
language provisional application suggested that the Office clarify 
whether the translation of the provisional application is to be filed 
in the provisional application or in any nonprovisional application 
claiming the benefit of the provisional application.
    Response: Section 1.78(a)(5) provides that if a provisional 
application is filed in a language other than English, any 
nonprovisional application claiming the benefit of the provisional 
application ``must contain * * * an English language translation of the 
non-English language provisional application and a statement that the 
translation is accurate.'' Thus, Sec. 1.78(a)(5) is clear that the 
English-language translation of the provisional application must be 
filed in any nonprovisional application claiming the benefit of the 
provisional application.
    Comment 11: One comment questioned whether an applicant can 
withdraw a priority claim to change the date on which the application 
will be published, noting that withdrawal of priority claims is 
provided for in PCT Rule 90bis.3.
    Response: The Office will recalculate the publication date in 
response to any change (withdrawal or addition) in priority claims. If 
this recalculation occurs earlier than nine weeks prior to the 
previously calculated publication date, the Office will reschedule the 
application for publication based upon the recalculated publication 
date. If this recalculation occurs later than nine weeks prior to the 
previously calculated publication date, the Office will not reschedule 
the application for publication based upon the recalculated publication 
date.
    Comment 12: One comment requested clarification of the meaning of 
the term ``original'' in Sec. 1.55.
    Response: An ``original'' application is any application other than 
a reissue application, which includes continuing applications and 
applications claiming the benefit of a foreign-filed application. See 
Guidelines Concerning the Implementation of Changes to 35 U.S.C. 102(g) 
and 103 and the Interpretation of the Term ``Original Application'' in 
the American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. 
Office 54, 56 (Apr. 11, 2000).
    Comment 13: One comment suggested that the time periods set forth 
in Secs. 1.55 and 1.78 should not apply to an application in which a 
nonpublication request under Sec. 1.213 is filed.
    Response: A nonpublication request may be rescinded at any time. 
See 35 U.S.C. 122(b)(2)(B)(ii) and Sec. 1.213(b). Thus, the Office must 
treat an application in which a nonpublication request under Sec. 1.213 
is filed the same as other applications for purposes of priority claims 
as well as review of the patent application drawing and paper 
(specification) during pre-examination processing of the application.
    Comment 14: One comment suggested that the time periods set forth 
in Secs. 1.55 and 1.78 unfairly limit an applicant's ability to delay 
presenting priority claims until the claim is necessary to avoid the 
prior art.
    Response: An applicant's desire to delay presenting priority claims 
until the claim is necessary to avoid the prior art is subordinate to 
the need for the timely presentation of priority claims for publication 
promptly after eighteen months from the earliest filing date for which 
a benefit is claimed. The Office previously indicated that eighteen-
month publication (if adopted) would require a drastic change in the 
practice of the presentation of priority claims filed. See General 
Agreement on Tariffs & Trade/North American Free Trade Agreement 
Student's Handbook at 6 (question 3), U.S. Patent and Trademark Office 
(1995).
    Comment 15: One comment suggested that the time periods set forth 
in Secs. 1.55 and 1.78 should not apply to the addition of priority 
claims in the situation in which the application is published within 
six months of its actual filing date, since the public has

[[Page 57041]]

not been harmed by the untimely priority claim.
    Response: The Office will not be able to include such untimely 
priority claims on the patent application publication (and the absence 
of a priority claim is not considered a ``material mistake'' warranting 
republication of the patent application publication under 
Sec. 1.221(b)). Thus, the public will be harmed by such an untimely 
presentation of a priority claim because the patent application 
publication will not contain the priority claim.
    Comment 16: One comment suggested that if priority claims are not 
required until the later of four months from the actual filing date or 
sixteen months from the earliest claimed priority date, a fourteen-week 
publication cycle would be too long since the public could not rely 
upon an application being published until twenty months from its 
earliest claimed priority date.
    Response: The Office plans to publish applications on the first 
Thursday after the date that is eighteen months after the filing date 
of the application (or if the application claims the benefit of an 
earlier filing date, the first Thursday after the date that is eighteen 
months after the earliest filing date for which a benefit is sought). 
Thus, the Office will schedule applications to begin the publication 
cycle on the date that is fourteen weeks before that date. If a 
priority claim under 35 U.S.C. 119, 120, 121, or 365(a) or (c) is filed 
within fourteen weeks of the date eighteen months after the earliest 
filing date for which a benefit is sought, the Office will not be able 
to publish the application on the first Thursday after the date that is 
eighteen months after the earliest filing date for which a benefit is 
sought because it requires a fourteen-week cycle to prepare an 
application for publication in view of the volume of applications to be 
published and preparation required for the publication.
    Comment 17: One comment suggested that the phrase ``or intellectual 
property authority'' be added after ``country'' in Sec. 1.55(c) for 
consistency with Sec. 1.55(a)(1)(i).
    Response: The parenthetical ``(or intellectual property 
authority)'' has been added after ``country'' in Sec. 1.55(c) for 
consistency with Sec. 1.55(a)(1)(i).
    Comment 18: One comment suggested that the limitation to ``500 
words'' in Sec. 1.72(a) was in conflict with PCT Rule 4.3, which 
specifies that the ``title of the invention shall be short (preferable 
from two to seven words when in English or translated into English. * * 
*''
    Response: Section 1.72(a) requires that the title be limited to 500 
characters (not words). PCT Rule 4.3 requires that ``title of the 
invention shall be short,'' and a title that exceeds 500 characters is 
not short. Therefore, Sec. 1.72(a) does not conflict with PCT Rule 4.3.
    Comment 19: One comment suggested that the Office clarify 
Sec. 1.72(a) to specify what characters can be included in the title of 
an application.
    Response: Section 1.72(a) as adopted does not prohibit non-keyboard 
character (images) in a title. Section 1.72(a) as adopted, however, 
provides that characters that cannot be captured and recorded in the 
Office's automated information systems (e.g., PALM) may not be 
reflected in the Office's records in such systems or in documents 
created by the Office. The Office will post the set of characters that 
are capable of being captured and recorded in PALM on its Internet Web 
site. The Office will revise the set of characters posted on its 
Internet Web site as characters are added to this set as a result of 
improvements to the Office's automated information systems. Applicants 
are strongly encouraged to restrict the characters in titles to 
characters in the set of characters indicated as capable of capture and 
recordation in PALM.
    Comment 20: One comment questioned why the Office would use the 
title of the invention (which does not uniquely identify an 
application) as the key for associating an EFS copy of an application 
with the application for which the copy is being submitted.
    Response: The Office uses the application number as the primary key 
for associating an EFS copy of an application with the application for 
which the copy is being submitted. In view of the number of 
applications filed each day, it is not practical to use the filing date 
to verify that the application number is correct (a transposition of 
the last four digits of the application number will not be revealed 
when compared to the filing date). The Office may also use other 
information to verify that the application number correctly indicates 
the application for which an EFS copy is being submitted.
    Comment 21: One comment questioned how the time period provision of 
Sec. 1.78(a)(2) applied to international applications.
    Response: The time period for claiming priority of a prior 
application in an international application is set forth in the PCT and 
the Regulations under the PCT.
    Comment 22: One comment suggested that the Office clarify whether 
the requirement in Sec. 1.78(a)(2) that the first sentence of an 
application indicate whether an international application was published 
in English applies to international applications filed before November 
29, 2000.
    Response: The requirement applies to any application filed on or 
after November 29, 2000, that claims the benefit of a prior 
international application, regardless of the filing date of the 
international application for which a benefit is claimed.
    Comment 23: One comment suggested that the expression ``[c]olor 
drawings are not permitted in international applications (see PCT Rule 
11.13)'' in Sec. 1.84 is redundant, since the PCT Rule is sufficient 
authority.
    Response: The rules of practice contain a number of provisions that 
reiterate provisions of the PCT Articles and Regulations, as well as 
title 35, U.S.C. While such reiterative provisions are (strictly 
speaking) redundant, they are included in the rules of practice for 
advisory purposes. If there is a change to the PCT Articles or 
Regulations (or title 35, U.S.C.), it is likely that the Office's rules 
of practice will require conforming changes in any event.
    Comment 24: One comment questioned whether there will be an 
Official Gazette publication with a figure when an application issues 
as a patent.
    Response: The Office plans to continue publishing an Official 
Gazette containing the weekly patent issues with (among other things) a 
representative drawing figure.
    Comment 25: One comment suggested that if the Office considers 
drawings in compliance with Sec. 1.84 necessary for publication, the 
Office should reduce the formality requirements of Sec. 1.84.
    Response: As discussed above, the Office plans to enforce the 
requirements of Sec. 1.84 necessary for creating a publication (the 
patent application publication) containing drawings of sufficient 
quality for the patent application publication to be routinely used as 
a prior art document.
    Comment 26: One comment suggested that the Office should not 
require drawings in compliance with Sec. 1.84 until fourteen months 
from the earliest claimed priority date. Another comment suggested that 
the Office release applications containing drawings that do not comply 
with Sec. 1.84 to the Technology Center, flag the PACR record of such 
applications, and simply add the later-filed drawings in compliance 
with Sec. 1.84 to the PACR database for publication.
    Response: Since the eighteen-month period is not measured from an 
application's actual filing date, but from the earliest filing date for 
which a benefit is claimed, many applications will enter the 
publication cycle before

[[Page 57042]]

being transferred from OIPE to the Technology Centers. The Office would 
need to track which applications have been released to the Technology 
Center without drawings in compliance with Sec. 1.84 and issue a notice 
requiring drawings in compliance with Sec. 1.84 during the examination 
process to ensure that drawings in compliance with Sec. 1.84 are filed 
before an application is scheduled to enter the publication cycle. 
Issuing such a notice during the examination process (when the Office 
is issuing Office actions) would result in confusion (likelihood of two 
different time periods running simultaneously) and would interfere with 
the Office's ability to meet the time frames specified in 35 U.S.C. 
154(b)(1)(A)(i) and (ii).
    Comment 27: Several comments opposed the change to Sec. 1.85 
requiring drawings in compliance with Sec. 1.84 before an application 
will be released to the Technology Center for examination. Several 
comments argued that this change will increase up-front costs for 
patent applicants. One comment suggested a two-tiered review: one level 
for publication and a second level for printing in a patent.
    Response: The patent statute no longer defers publication of an 
application until patent grant. Thus, the Office can no longer permit 
applicants to defer the submission of publication quality drawings (and 
the cost of preparing such drawings) until an application is allowed. 
Since the patent application publication will become the primary prior 
art and technology dissemination document, there is no point to 
providing for higher drawing quality in patents than in patent 
application publications.
    Comment 28: Several comments suggested that Sec. 1.98(a)(2)(ii) not 
require a copy of a cited copending application, especially since the 
Office has an electronic database containing copies of applications as 
filed. Another comment also argued that this provision in combination 
with Sec. 1.14(c)(2) will allow third parties to obtain a copy of any 
cited copending application causing: (1) The cited application to 
become a publication that may bar the filing of the cited application 
in foreign countries; (2) the disclosure of trade secrets from the 
cited application (which may have been abandoned prior to its scheduled 
publication date); and (3) an increase in paper submissions to the 
Office.
    Response: The Office proposed amending Sec. 1.98(a)(2)(ii) to 
require a copy of any cited copending application in a rulemaking to 
implement the Patent Business Goals. See Changes to Implement the 
Patent Business Goals, 64 FR at 53833, 1228 Off. Gaz. Pat. Office at 
18. The comments on this proposed change to Sec. 1.98 are addressed in 
the final rule to implement the Patent Business Goals.
    Comment 29: One comment questioned whether Sec. 1.99 is consistent 
with the requirements of 35 U.S.C. 122(c) (which instruct the Office to 
ensure that no protest or opposition be initiated after publication 
without the express written consent of the applicant), and suggested 
that the Office not adopt this proposed rule.
    Response: 35 U.S.C. 122(c) provides that the Office ``shall 
establish appropriate procedures to ensure that no protest or other 
form of pre-issuance opposition to the grant of a patent on an 
application may be initiated after publication of the application 
without the express written consent of the applicant.'' A submission 
under Sec. 1.99, however, is different from either an ``opposition'' 
proceeding or a ``protest'' that would fall under the provisions of 35 
U.S.C. 122(c).
    Unlike a third-party submission of patents and publications under 
Sec. 1.99, an opposition is a very complex, inter partes proceeding. 
Examples of oppositions include trademark oppositions and foreign 
patent office oppositions.
    Trademark oppositions, conducted before the Trademark Trial and 
Appeal Board, are full adversarial proceedings similar to a trial, 
complete with pleadings, notice, discovery, stipulations, motions, 
briefs, evidence, and opportunity for oral argument. A trademark 
opposition proceeding is governed by the Federal Rules of Civil 
Procedure, except as otherwise provided. 37 CFR 2.101 through 2.107 and 
2.116 through 2.136, sections 1503 through 1503.05 of the Trademark 
Manual of Examining Procedure, and Chapters 300 through 800 of the 
Trademark Trial And Appeal Board Manual of Procedure set forth an 
overview of the complex nature of trademark opposition proceedings. In 
view of the similarity to an inter partes civil proceeding, it is clear 
that trademark oppositions are much different in character compared to 
a third-party submission of patents and publications under Sec. 1.99 
(which bars a third party from even filing a paper arguing against the 
patentability of an application).
    Similar to the Office's trademark opposition procedure, oppositions 
in patent cases in both the Japanese Patent Office (JPO) and the 
European Patent Office (EPO) are lengthy inter partes proceedings in 
which a third party has extensive participation in challenging the 
grant of a patent. Both the EPO and the JPO allow for evidence, 
multiple briefs, an oral hearing, and appeals, and the procedures to be 
followed are very technical and complex. See Chapter 66 (Patent 
Opposition System) of the JPO's Manual of Appeal and Trial Proceedings; 
see also Part D Opposition Procedure of Guidelines for Examination in 
the European Patent Office.
    Likewise, a third-party submission of patents and publications 
under Sec. 1.99 is not a ``protest.'' As generally understood, a 
protest is ``a complaint, objection, or display of unwillingness 
usually to an idea or course of action.'' See Merriam Webster's 
Collegiate Dictionary (1993). Under that commonly understood meaning, a 
third-party submission of patents and publications under Sec. 1.99 does 
not rise to the level of a protest because Sec. 1.99 does not permit 
the filing of any complaint or objection. No form of adversarial 
argument is allowed under Sec. 1.99. Instead, a third party is limited 
to merely submitting prior art without any corresponding commentary.
    The Office does have an existing regulation (Sec. 1.291) entitled: 
``Protests by the public against pending applications.'' Under 
Sec. 1.291, a member of the public may file a protest in a pending 
application, which protest comprises: (1) A list of the prior art 
references or other information relied upon; (2) an explanation of the 
relevance of each listed item; (3) a copy of each listed item; and (4) 
an English translation of each item, if necessary. See Sec. 1.291(b). 
In direct contrast to a protest under Sec. 1.291, however, Sec. 1.99 
does not permit the third party to transmit any commentary or 
adversarial arguments objecting to a patent application. Rather, 
Sec. 1.99 is structured so as to avoid compromising the objectivity of 
the ex parte character of the examination process.
    Only patents and publications (i.e., prior art documents that are 
public information that are theoretically available to the examiner and 
which the Office would discover on its own in an ideal world) may be 
supplied to the examiner in a submission under Sec. 1.99. As such, the 
bare submission of patents and publications is not a protest any more 
than the submission of an information disclosure statement under 
Secs. 1.97 and 1.98 by the patent applicant is a ``protest.'' In 
addition, patents and publications may be submitted for various 
reasons: Individuals may wish to submit patents or publications to help 
the examiner understand the technology or the appropriate field of 
search. Therefore, third-party submission of

[[Page 57043]]

patents and publications under Sec. 1.99 is qualitatively different 
from a protest under Sec. 1.291.
    Title 35, U.S.C., provides that the Office may issue a patent only 
if it appears that the applicant is entitled to a patent in view of the 
prior art (35 U.S.C. 102 and 103). 35 U.S.C. 122(c) does not disqualify 
prior art simply because that prior art came to the attention of the 
Office through a third party. Thus, the Office interprets ``protest or 
opposition'' in 35 U.S.C. 122(c) to mean that the Office is to ensure 
that no third party is given the ability (or right) to have input on 
the examination of the application after publication and argue against 
the application's patentability. Section 1.99 simply sets forth a 
procedure under which a third party can bring prior art relevant to a 
published application to the attention of the Office. As an important 
safeguard for the rights of the applicant, it does not give the third 
party the ability or right to participate in the examination of the 
application as a result of such prior art being brought to the 
attention of the Office. Accordingly, Sec. 1.99 will improve the 
quality of examination and at the same time will ensure that no third 
parties enter written, adversarial arguments, thereby coloring the ex 
parte process.
    Comment 30: One comment suggested that the limitations in Sec. 1.99 
do not adequately protect the applicant from misuse of eighteen-month 
publication by third parties because third parties may submit 
information directly to the applicant (or the applicant's 
representative), who in turn may be obligated under Sec. 1.56 to 
disclose the information to the Office. The comment suggested amending 
Sec. 1.56 to exempt persons associated with an application from 
considering information received from a third party.
    Response: The Office did not propose changes to the provisions of 
Sec. 1.56. Given the ex parte nature of the examination of an 
application for patent, the obligations placed on an applicant under 
Sec. 1.56 are paramount to that examination. Therefore, the Office 
considers it inappropriate to alter the provisions of Sec. 1.56 simply 
because eighteen-month publication may result in prior art being 
brought to an applicant's attention at an inopportune point in the 
examination process.
    Comment 31: Several comments suggested that Sec. 1.99 be amended to 
permit third parties to provide explanations as to the relevant parts 
of the patents or publications, since such explanations may be 
necessary in the case of a complex or voluminous patent or publication. 
Another comment suggested that since Sec. 1.99(b)(4) permits 
translations of the necessary and pertinent parts of non-English 
language publications, Sec. 1.99 should permit markings on the 
necessary and pertinent parts of English language publications. Another 
comment also suggested that examiners should be required to consider 
patents and publications submitted in compliance with Sec. 1.99.
    Response: To ensure that a third-party submission under Sec. 1.99 
does not amount to a protest or other opposition, the Office cannot 
permit the third party to either: (1) Provide explanations (e.g., as to 
how the patents or publications render the claims unpatentable) with 
the patents and publications; or (2) have the right to insist that the 
Office ``consider'' any of the patents or publications submitted. The 
third party, however, may submit redacted versions of a patent or 
publication containing only the most relevant portions of the patent or 
publication.
    Comment 32: One comment suggested that the rules of practice should 
encourage third parties to submit prior art to the Office (especially 
the computer software and business methods areas), and that the $180 
fee (Sec. 1.17(p)) for a third-party submission will be contrary to the 
public interest by discouraging third parties from submitting prior 
art. The comment suggested an alternative fee structure based upon the 
nature of the third party (small entity, non-small entity) or nature of 
the submission (non-patent publications, number of patents or 
publications).
    Response: 35 U.S.C. 41(d) authorizes the Office to establish fees 
to recover the estimated average cost of providing services or products 
not otherwise provided for. The Office has recently lowered the fee set 
forth in Sec. 1.17(p) to $180, which is set at a fee amount to recover 
the aggregate costs of handling and reviewing the information (patents 
and publications) brought to the attention of the Office subsequent to 
the issuance of a first Office action. Since the nature of the third 
party (small entity, non-small entity), or nature of the submission 
(non-patent publications), or nature of the technology of the 
submission does not impact this cost, 35 U.S.C. 41(d) does not 
authorize the Office to vary the fee based upon these factors (and 
Sec. 1.99 places a limit on the number of patents or publications in 
the submission).
    Comment 33: Several comments suggested that Sec. 1.99 include the 
following provisions to avoid becoming a means for third parties to 
harass the applicant or disrupt the examination process: (1) Require 
that the third party provide evidence that it has served the 
information being submitted on the applicant (rather than expecting the 
Office to do so); (2) require the third party to declare (under oath or 
declaration) whether he/she is submitting the information pursuant to 
an agency relationship (and, if so, to identify the real party in 
interest); and (3) permit the third party to submit only five (rather 
than twenty) patents or publications and to screen the information to 
eliminate patents or publications that have already been cited in the 
application.
    Response: Section 1.99(c) requires that the submission be served on 
the applicant in compliance with Sec. 1.248. Section 1.248 requires 
that: (1) Service be made by the third party, not the Office 
(Sec. 1.248(a)); and (2) the third party provide evidence that it has 
served the information being submitted on the applicant (1.248(b)).
    Section 1.99 as adopted limits the number of patents and 
publications in such a submission to ten (rather than twenty). 
Nevertheless, if a patent or publication is highly probative, it would 
not be in the third party's interest to include such a patent or 
publication in a submission containing even ten patents or publications 
(since the third party cannot provide any explanation with the 
submission).
    The Office considers further restrictions on the number of patents 
or publications in a submission under Sec. 1.99 to be unnecessary. 
Since the third party has no ability or right to have input on what 
will happen during the examination of the application as a result of 
the submission under Sec. 1.99, the real party in interest is of no 
concern. Finally, the Office plans (as discussed above) to screen 
submissions under Sec. 1.99 to determine whether they are limited to 
patents and publications before the submission is placed in the file of 
the application and forwarded to the examiner, and to remove any 
explanations or information (other than patents and publications) from 
the submission before it is placed in the file of the application and 
forwarded to the examiner.
    Comment 34: One comment also suggested that the Office clarify the 
condition (e.g., delay was ``unavoidable'') under which patents and 
printed publications submitted later than two months from the date of 
publication of the application or prior to the mailing of a notice of 
allowance (whichever is earlier) will be considered.
    Response: A submission under Sec. 1.99 later than the period 
specified in Sec. 1.99(e) is permitted only when the

[[Page 57044]]

patents or publications could not have been submitted to the Office 
earlier (e.g., an amendment submitted in the published application 
after publication changes the scope of the claims to an extent that 
could not reasonably have been anticipated by a person reviewing the 
published application during the period specified in Sec. 1.99(e)).
    Comment 35: One comment suggested that third parties should be 
given three (rather than two) months from the date of publication of 
the application or prior to the mailing of a notice of allowance, 
whichever is later (rather than whichever is earlier) to submit patents 
or publications under Sec. 1.99.
    Response: The time period in Sec. 1.99 balances the desirability of 
considering the best prior art during examination of an application 
with the need to avoid undue interference with the examination of the 
application. The Office considers a time period of two months from the 
date of publication of the application or prior to the mailing of a 
notice of allowance, whichever is earlier, as striking a better balance 
between these interests.
    Comment 36: One comment questioned how the time period specified in 
Sec. 1.99(e) would apply to an international application.
    Response: The submission must be filed within two months of the 
publication of the application under 35 U.S.C. 122(b), and not the IB 
publication, or prior to the mailing of a notice of allowance, 
whichever is earlier.
    Comment 37: One comment contained a number of questions and 
suggestions concerning Sec. 1.130: (1) Sec. 1.130 does not address the 
change to 35 U.S.C. 103(c) in Sec. 4807 of the American Inventors 
Protection Act of 1999 and has a confusing heading; (2) the requirement 
for an oath or declaration that ``the application or patent under 
reexamination and patent or published application are currently owned 
by the same party'' is confusingly written; (3) it is not clear who 
must make the required oath or declaration under Sec. 1.130(a)(2); and 
(4) it is not clear why such an oath or declaration is necessary since 
this information is available in the terminal disclaimer and 
assignments.
    Response: Section 1.130 was adopted in September of 1996 to address 
those situations in which: (1) The rejection in an application or 
patent under reexamination to be overcome is a rejection under 35 
U.S.C. 103 in view of a U.S. patent which is not prior art under 35 
U.S.C. 102(b); (2) the inventions defined by the claims in the 
application or patent under reexamination and by the claims in the U.S. 
patent are not identical but are not patentably distinct; and (3) the 
inventions are owned by the same party. See MPEP 718; see also 
Miscellaneous Changes in Patent Practice, 61 FR at 42795, 1190 Off. 
Gaz. Pat. Office at 71. Section 1.130 does not address the change to 35 
U.S.C. 103(c) in Sec. 4807 of the American Inventors Protection Act of 
1999 (and appears to have a confusing heading) because Sec. 1.130 is 
not directed to implementing the provisions of 35 U.S.C. 103(c).
    The phrase ``application or patent under reexamination and patent 
or published application'' is designed to cover four situations: (1) 
The rejection of a claim in an application on the basis of a commonly 
assigned patent; (2) the rejection of a claim in an application on the 
basis of a commonly assigned published application; (3) the rejection 
of a claim in a patent under reexamination on the basis of a commonly 
assigned patent; and (4) the rejection of a claim in a patent under 
reexamination on the basis of a commonly assigned published 
application.
    The oath or declaration under Sec. 1.130(a)(2) may be signed by the 
inventor(s), a registered practitioner of record, or the assignee of 
the entire interest. See MPEP 718.
    Section 1.130 requires such an oath or declaration because the 
assignee information in the terminal disclaimer or recorded assignments 
may not be current, and the applicant is in the best position to verify 
that the application or patent under reexamination and patent or 
published application are currently owned by the same party.
    Comment 38: One comment suggested that the second sentence of 
Sec. 1.131 is unnecessary and inappropriately omits any reference to 35 
U.S.C. 102(a), and that the phrase ``by reference to acts'' appears to 
have been inadvertently omitted in the subsequent two sentences.
    Response: The second sentence of Sec. 1.131(a) provides that the 
effective date of a U.S. patent, U.S. patent application publication, 
or international application publication under PCT Article 21(2) is the 
earlier of its publication date or the date that it is effective as a 
reference under 35 U.S.C. 102(e). While the second sentence of 
Sec. 1.131 is technically unnecessary, it serves as a reminder that the 
effective date of a U.S. patent, U.S. patent application publication, 
or international application publication under PCT Article 21(2), for 
prior art purposes, may be earlier than its publication date (i.e., its 
effective date under 35 U.S.C. 102(a)). In addition, the phrase ``by 
reference to acts'' has not been omitted in the subsequent two 
sentences of Sec. 1.131. See Sec. 1.131(a)(2)(1995)-(2000).
    Comment 39: One comment suggested that Sec. 1.132 be revised to 
permit an oath or declaration under Sec. 1.132 to traverse a rejection 
even if the rejection is based upon a patent or application to another 
that claims the same patentable invention. Another comment suggested 
that Sec. 1.132 be revised to permit an oath or declaration under 
Sec. 1.132 to traverse a rejection even if the rejection is based upon 
a published application to another that claims the same patentable 
invention.
    Response: Section 1.132 as adopted provides that when any claim of 
an application or a patent under reexamination is rejected or objected 
to, any evidence submitted to traverse the rejection or objection on a 
basis not otherwise provided for must be by way of an oath or 
declaration under Sec. 1.132.
    Comment 40: One comment suggested that the reference in 
Sec. 1.137(d)(2) requiring that a terminal disclaimer also apply to 
utility or plant applications filed after June 8, 1995, is unnecessary.
    Response: Section 1.137(d)(2) as adopted provides that such a 
terminal disclaimer also apply to utility or plant applications filed 
before (not after) June 8, 1995.
    Comment 41: One comment suggested that the requirement for a 
terminal disclaimer in an application abandoned due to the applicant's 
failure to timely notify the Office of a foreign filing was unfair 
because such abandonment will not delay prosecution of the application.
    Response: Section 1.137(d) does not require a terminal disclaimer 
for a utility or plant application filed on or after June 8, 1995, and 
the eighteen-month publication provisions of the American Inventors 
Protection Act of 1999 apply only to utility or plant applications 
filed on or after November 29, 2000.
    Comment 42: One comment suggested that the provisions of 
Sec. 1.137(f) should include punitive measures to avoid frivolous or 
fraudulent nonpublication requests, since an applicant should make a 
nonpublication request only when positive that an application will not 
be filed in a foreign country, and would be seriously negligent to 
intentionally make such a nonpublication request, subsequently file in 
a foreign country, and then fail to satisfy his or her obligation to 
timely notify the Office that a corresponding application has been 
filed in a foreign country. The comment suggested similar treatment for 
applications for which a redacted copy was submitted for publication, 
and the redacted copy

[[Page 57045]]

improperly omitted portions of the application.
    Response: Since an applicant would have to be ``seriously 
negligent'' to submit a nonpublication request on filing, subsequently 
file a corresponding application in a foreign country, and then 
unintentionally fail to timely notify the Office that a corresponding 
application has been filed in a foreign country, the Office expects few 
petitions to revive an application under the provisions of 
Sec. 1.137(f). If an applicant intentionally (or fraudulently) delays 
notifying the Office that a corresponding application has been filed in 
a foreign country, the applicant cannot revive the application under 
Sec. 1.137 (or if revival is obtained on the basis of improper 
statements, such revival will not likely survive court review during 
any attempt to enforce the patent). An applicant who intentionally 
submits an improperly redacted copy of an application for publication 
is not dealing with the Office consistent with the duty of candor and 
good faith (Sec. 1.56), and will likely meet a similar fate when 
attempting to enforce any patent resulting from the application.
    Comment 43: One comment suggested that the language of 
Sec. 1.137(g) does not take into account the amendment to 35 U.S.C. 
119(e) in Sec. 4801(b) of the American Inventors Protection Act of 
1999.
    Response: Section 1.137(g) contains the phrase ``[s]ubject to the 
provisions of 35 U.S.C. 119(e)(3) and Sec. 1.7(b),'' to take into 
account the amendment to 35 U.S.C. 119(e) in Sec. 4801(b) of the 
American Inventors Protection Act of 1999.
    Comment 44: One comment suggested that the Office create a special 
box to which an express abandonment being made to avoid publication are 
to be mailed to allow ``last minute'' express abandonments to achieve 
their goal of avoiding publication.
    Response: Petitions under Sec. 1.138 should be addressed to: Box 
PGPUB-ABN. While addressing a petition under Sec. 1.138 to Box PGPUB-
ABN will increase the chances of such petition being received by the 
appropriate officials in sufficient time to avoid publication of an 
application, it is unlikely that a petition under Sec. 1.138 filed 
within four weeks of the projected date of publication will be 
effective to avoid publication under any circumstance. Thus, applicants 
should not rely upon Box PGPUB-ABN as permitting ``last minute'' 
express abandonments to achieve their goal of avoiding publication.
    Comment 45: One comment suggested that eighteen-month publication 
will benefit only large companies since small corporations and 
independent inventors rely upon their applications being maintained in 
confidence, and that eighteen-month publication does not promote the 
useful arts and sciences as to small corporations and independent 
inventors who rely upon their applications being maintained in 
confidence. Another comment suggested that eighteen-month publication 
will benefit only large companies to the detriment of small 
corporations and independent inventors, and a patent application should 
be maintained in confidence until a patent is granted.
    Response: The proposed changes to the rules of practice concern how 
(and not whether) the Office will implement the eighteen-month 
publication provisions of the American Inventors Protection Act of 
1999. In any event, the eighteen-month publication provisions of the 
American Inventors Protection Act of 1999 permit small corporations and 
independent inventors (or any applicant) who do not file counterpart 
foreign or international applications (which are subject to eighteen-
month publication) to ``opt-out'' of eighteen-month publication 
(Sec. 1.213), and provide provisional rights protection (35 U.S.C. 
154(d)) to those who do not or cannot ``opt-out'' of eighteen-month 
publication.
    Comment 46: One comment suggested that the eighteen-month period 
for publication of an application should not include a prior 
application for which the application claims a benefit as a 
continuation-in-part application.
    Response: 35 U.S.C. 122(b) provides for publication at eighteen 
months ``from the earliest filing date for which a benefit is sought 
under this title.'' Thus, 35 U.S.C. 122(b) provides that this eighteen-
month period is measured from the earliest claimed filing date, whether 
the benefit of that filing date is claimed as a continuation, 
divisional, or continuation-in-part application.
    Comment 47: Several comments suggested that it is inefficient and 
inappropriate to (re)publish an international application if the 
international application has been published by the IB under PCT 
Article 21 in English. One comment suggested that PCT Article 29 and 35 
U.S.C. 374 equate the IB publication of an international application to 
the publication of the application under 35 U.S.C. 122(b). Another 
comment suggested that if the Office means to publish an international 
application even if the international application has been published by 
the IB under PCT Article 21 in English, the Office should amend 
Sec. 1.211(a) to explicitly state as much.
    Response: The IB publication of an international application will 
not be included in the Office's patent application publication search 
database. The Office must (re)publish international applications that 
entered the national stage to place these applications into its patent 
application publication search database. The benefit gained by ensuring 
that these prior art documents will be included in the Office's patent 
application publication search database outweighs the cost of 
(re)publishing these applications.
    Since Sec. 1.211(a) states that ``each international application in 
compliance with 35 U.S.C. 371 will be published promptly after the 
expiration of a period of eighteen months from the earliest filing date 
for which a benefit is sought under title 35, United States Code.'' No 
amendment to Sec. 1.211(a) is necessary for it to explicitly state that 
the Office will publish an international application that is in 
compliance with 35 U.S.C. 371 (regardless of whether the international 
application has been published by the IB under PCT Article 21 in 
English).
    Comment 48: One comment suggested that the Office clarify the 
phrase ``sufficient time'' in Sec. 1.211(a) so that applicants in the 
same situations will be treated the same.
    Response: The Office cannot remove an application from the 
publication process later than two weeks from the projected date of 
publication. Thus, the phrase ``sufficient time'' means that the 
application must issue as a patent at least two weeks before its 
projected publication date. Section 1.211(a) does not include a 
specified time frame because improvements in the publication process 
may permit the Office to remove an application from the publication 
process later than two weeks from the projected date of publication.
    Comment 49: One comment suggested that the burden should be on the 
Office to determine whether a corresponding application has been filed 
in a country that requires eighteen-month publication. The comment also 
suggested that the Office publish only applications that the Office can 
demonstrate that the application has been or will be filed in a country 
that requires eighteen-month publication or if the applicant 
affirmatively requests publication. The comment also suggested that an 
applicant's failure to timely notify the Office of a foreign filing 
should not result in abandonment of the application, and that the 
Office should send reminders of this obligation to those applicants who 
file a

[[Page 57046]]

nonpublication request with their applications.
    Response: 35 U.S.C. 122(b)(2)(B)(i) places the burden on the 
applicant to affirmatively request that an application not be 
published, and 35 U.S.C. 122(b)(2)(B)(iii) provides that an application 
is abandoned (by operation of law) if an applicant submits a 
nonpublication request, subsequently files a corresponding application 
in a foreign country, and then fails to timely notify the Office that a 
corresponding application has been filed in a foreign country. 35 
U.S.C. 122(b)(2)(B) does not provide for the Office to determine or 
demonstrate whether a corresponding application has been filed in a 
foreign country or to issue reminders to applicants who filed a 
nonpublication request with their applications.
    Comment 50: One comment suggested that the certification 
requirement of Sec. 1.213 is too severe, and that an applicant should 
be required to certify only that a foreign filing is not contemplated 
and that the applicant will notify the Office promptly in the event 
that a foreign filing occurs.
    Response: The certification required by Sec. 1.213 tracks the 
certification required by 35 U.S.C. 122(b)(2)(B)(i) (``the invention 
disclosed in the application has not and will not be the subject of an 
application filed in another country, or under a multilateral 
international agreement, that requires publication of applications 18 
months after filing''). The suggested ``less severe'' certification 
would not be consistent with the certification required by 35 U.S.C. 
122(b)(2)(B)(i).
    Comment 51: One comment suggested that since submission of a 
nonpublication request is a serious matter and an application for which 
a nonpublication request is submitted requires exception handling, the 
Office should charge a substantial fee for submitting a nonpublication 
request.
    Response: While the submission of a nonpublication request and 
certification should be considered a ``serious matter'' by applicant, 
the ``exception processing'' required for an application in which a 
nonpublication request is submitted is not sufficient to warrant 
charging a processing fee. The patent statute does not authorize the 
Office to charge ``a substantial fee'' (or surcharge) simply because of 
the seriousness of the request and certification.
    Comment 52: Several comments requested clarification on whether the 
Office would grant a foreign filing license in the situation in which 
an application is filed with a nonpublication request (which must 
certify that the invention disclosed in the application has not been 
and will not be the subject of an application filed in another country, 
or under a multilateral agreement, that requires publication at 
eighteen months after filing).
    Response: The Office will review an application to determine 
whether it is appropriate to grant a foreign filing license even if the 
applicant files a nonpublication request with the application because: 
(1) The applicant may subsequently file the application in a foreign 
country that requires eighteen-month publication and notify the Office 
of such filing; and (2) not all foreign countries require eighteen-
month publication.
    Comment 53: Several comments suggested that Sec. 1.215 also state 
that the patent application publication include the classification of 
the patent application.
    Response: The Office plans to include the classification on the 
front page of a patent application publication. The rules of practice 
do not set forth the particulars of what appears on the front page of a 
patent. Therefore, it is not necessary for the rules of practice to set 
forth this or other particulars of what will appear on the front page 
of a patent application publication.
    Comment 54: Several comments suggested that the Office provide a 
``transitional publication arrangement'' for applications that are due 
for publication shortly after they are filed (due to a claim under 35 
U.S.C. 120). The comment specifically suggested that applicants should 
be given some period of time (after the filing date) within which to 
comply with the requirements for publication before the delay in 
compliance serves as a basis for a reduction in any patent term 
adjustment.
    Response: The notice of proposed rulemaking sets forth with 
particularity the Office's planning approach to eighteen-month 
publication. Therefore, the public has been given over seven months of 
notice of the requirements an application must meet to be in condition 
for eighteen-month publication. Since any applicant filing an 
application on or after November 29, 2000, has been given this notice 
of the requirements an application must meet to be in condition for 
eighteen-month publication, the Office is not providing a 
``transitional publication arrangement.'' The impact that a delay in 
compliance with the requirements for publication will have on patent 
term adjustment is set forth in 35 U.S.C. 154(b)(2)(C)(ii) and 
Sec. 1.704(b).
    Comment 55: Several comments suggested that the Office's reliance 
upon its electronic filing system (EFS) for submission of copies 
(redacted, as-amended, or for voluntary publication) of an application 
for publication purposes jeopardizes the optional publication 
procedures. The comments specifically suggested that: (1) The Office 
should not mandate the filing of a copy of an application for 
publication purposes by EFS until the Office has demonstrated that EFS 
is fully functional; (2) applicants' experience with the Office's pilot 
EFS program has been plagued with extra costs and information system 
problems; (3) an EFS submission requirement effectively excludes the 
small inventor community; and (4) the EFS submission requirement 
effectively deprives most applicants of the right to seek voluntary 
publication or publication of an application ``as-amended'' by 
requiring a copy of the previously filed application to be submitted in 
a particular filing system.
    Response: A key objective of any pilot program is to identify 
improvements that can or should be made to the program. EFS pilot 
participant experiences have identified such improvements for the EFS 
software, and the Office has enhanced EFS based upon such experiences. 
EFS as enhanced will permit applicants to create a copy of the patent 
application text in a familiar word processing environment with minimal 
effort. The accuracy and speed resulting from the improvements to the 
authoring tool (word processing software for creating tagged patent 
application specification text), and the EFS desktop software (used for 
the submission of a copy of an application via EFS), will facilitate 
the timely and efficient publication of applications.
    Examples of improvements to be implemented by November of 2000 in 
the next release of the Patent Application Specification Authoring Tool 
(PASAT) are: (1) An enhanced Office Assistant function including 
capability to enable or disable the help option; (2) the addition of 
keyboard short cuts to facilitate authoring; (3) enhanced editing 
capabilities to be available, for example, inserting special characters 
during a ``paste text'' process; (4) the capability to copy and paste 
tables from an existing word processing document; and (5) an enhanced 
authoring tool that will support Microsoft Windows 2000 and Word 2000 
software.
    The Office also plans to have the following improvements in the 
desktop software (electronic Packaging and Validation Engine (ePAVE)) 
in place by the fall of 2000: (1) A feature permitting applicants to 
enter free-form text

[[Page 57047]]

(comments) as part of the electronic filing transmittal; (2) providing 
for the entry of the application information for the application data 
sheet (Sec. 1.76); and (3) preview and printing of patent application 
information before submission.
    These new features will be fully tested as part of the software 
quality assurance component of the Office's system development process 
for managing software development and deployment. Thus, EFS will be 
sufficiently enhanced by the fall of 2000 to be relied upon for 
submission of a copy of an application to the Office under the optional 
publication provisions of Secs. 1.215, 1.217, and 1.221.
    Finally, the Office has also conducted a number of workshops 
concerning its Patent Electronic Business Center (which include filings 
under EFS) through the Patent and Trademark Depository Libraries 
(PTDLs). These workshops include a portion specifically directed at 
independent inventors.
    Comment 56: One comment suggested that the Office permit applicants 
to file paper copies of applications for publication and charge a fee 
to recover the cost of converting the application into an electronic 
format.
    Response: The suggested approach is impractical in view of the 
current nature of the Office's budget. The Office cannot spend the fees 
it collects absent authority from Congress to do so. Recently, Congress 
has not authorized the Office to spend all of the fees it collects; 
rather, Congress has authorized the Office to spend up to only a 
certain amount of the fees it collects and diverted the remaining fees 
to other programs. Thus, even if the Office collects the suggested fee 
(ostensibly to recover the Office's cost of converting the application 
into an electronic format), such fees would likely be diverted from the 
Office leaving the Office with no funding to actually recover the 
Office's cost of converting the application into an electronic format.
    Comment 57: One comment questioned how color drawings, which are 
still permitted to be filed on paper and are not permitted by EFS, can 
be submitted via EFS.
    Response: Patent application publications will not contain color 
drawings (if an application is filed with color drawings, the patent 
application publication will include only a black-and-white copy of the 
color drawings). Therefore, it is unnecessary to provide for color 
drawings to be submitted by EFS for publication purposes.
    Comment 58: One comment questioned how a continued prosecution 
application (CPA) under Sec. 1.53(d) would be published as a patent 
application publication, and suggested that the Office use the claims 
as filed in a CPA as they existed at the termination of prosecution (in 
the prior application) as the basis for the patent application 
publication due to the provisional rights requirements of 35 U.S.C. 
154(d).
    Response: The Office has amended Sec. 1.53(d)(1)(i) to provide that 
the prior application of a CPA (utility or plant) must have been filed 
prior to May 29, 2000. See Changes to Application Examination and 
Provisional Application Practice, Interim Rule, 65 FR 14865, 14872 
(Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000). This 
should cause CPA practice (in utility or plant applications) to phase 
out and limit the instances in which the Office must publish a CPA. The 
Office plans to create a patent application publication for a CPA under 
Sec. 1.53(d) using its PACR database or microfilm records. Thus, a 
patent application publication for a CPA will reflect the prior 
application (the application originally assigned the application number 
assigned to the CPA) as filed. For this reason, any applicant filing a 
CPA under Sec. 1.53(d) on or after November 29, 2000, is advised to 
also file a copy of the application-as-amended for publication purposes 
to take full advantage of provisional rights under 35 U.S.C. 154(d).
    Comment 59: One comment suggested that the Office clarify the 
``separate paper'' requirement for assignee information to be printed 
on the patent application publication (e.g., whether it can be included 
on a transmittal letter, whether a separate paper is required for each 
item of information). Another comment suggested that since it will 
benefit the public to have assignee information included on the patent 
application publication, the Office should provide a convenient manner 
of submitting assignee information for inclusion on the patent 
application publication. Another comment suggested that the Office set 
forth a form or format to avoid confusion over the requirements for 
submitting assignee information for inclusion on the patent application 
publication.
    Response: Section 1.76 has been revised to provide for the 
inclusion of assignee information on the application data sheet. See 
Sec. 1.76(b)(7). Assignee information is the name (either person or 
juristic entity) and address of the assignee of the entire right, 
title, and interest in an application. Section 1.215(b) has been 
revised to provide that if the applicant wants the patent application 
publication to include assignee information, the applicant must include 
the assignee information on the application transmittal sheet or the 
application data sheet (Sec. 1.76).
    Comment 60: One comment suggested that the Office print the 
assignment information contained in its assignment records on patent 
application publications, rather than relying upon or expecting 
applicants to provide this information on a separate paper.
    Response: The Office does not require that appropriate assignee 
information be printed on a patent and does not plan to require that 
appropriate assignee information be printed on a patent application 
publication. Therefore, the Office plans to simply print such assignee 
information as is provided by an applicant, rather than automatically 
include assignee information from its assignment records on a patent 
application publication.
    Comment 61: One comment suggested that applicants should receive 
confirmation of a nonpublication request on the filing receipt. The 
comment also suggested that if the publication date is changed at all 
(and not just by more than two weeks), the applicants should be 
notified of the new publication date.
    Response: If a nonpublication request is filed with an application, 
the filing receipt for the application will indicate ``No Publication'' 
to confirm receipt of the nonpublication request to the applicant. If 
the application has not yet entered the fourteen-week publication 
cycle, the applicant will be notified of any changes in the publication 
date. If the application has entered the fourteen-week publication 
cycle, the applicant will only be notified of changes in the 
publication date if the publication date is changed by more than two 
weeks.
    Comment 62: One comment suggested that the Office should place 
paper copies of patent application publications in the Public Search 
Room and in the examiners' search rooms.
    Response: The Office has considered placing paper copies of patent 
application publications in the Public Search Room and in the 
examiners' search rooms. The Office, however, is migrating to a fully 
electronic search and the investment necessary to create and maintain 
both electronic and paper collections of patent application 
publications is not feasible.
    Comment 63: One comment suggested that the Office should place its 
weekly volumes of patent application publications on its Internet Web 
site so that they are as readily available as issued U.S. patents.

[[Page 57048]]

    Response: The Office plans to place its weekly volumes of patent 
application publications (both image and text-searchable) on its 
Internet Web site.
    Comment 64: A number of comments opposed the publication of only a 
redacted copy of an application (rather than the entire application). 
One comment questioned whether a redacted copy of an application 
satisfied the ``actual notice'' requirement of 35 U.S.C. 154(d).
    Response: The filing of a redacted copy of an application for 
publication is provided for in 35 U.S.C. 122(b)(2)(B)(v). Whether 
publication of a redacted copy of an application will satisfy the 
provisional rights requirements of 35 U.S.C. 154(d) will depend upon 
the particulars of the situations. Any applicant seeking provisional 
rights requirements of 35 U.S.C. 154(d) but planning to file a redacted 
copy of an application for publication should carefully consider the 
provisions of the last sentence of 35 U.S.C. 122(b)(2)(B)(v).
    Comment 65: Several comments suggested that the requirements (e.g., 
use of EFS, multiple copies of submissions and Office actions, 
bracketed copy of application showing redactions, and copies and 
translations of foreign applications) for a redacted copy of an 
application for publication, are so onerous they frustrate the purpose 
of the statute. The comments suggested that the Office should not 
require that a redacted copy of an application submitted for 
publication purposes be filed by EFS. One comment also suggested that 
the Office should treat applications for which a redacted copy is 
submitted for publication the same as other applications.
    Response: The Office is requiring a copy of the application showing 
redactions in brackets and copies and translations of foreign 
counterpart applications so that the applicant will compare the 
application as redacted to the foreign counterpart applications to 
ensure that any redaction is appropriate. This will help to avoid the 
situation in which an applicant inadvertently redacts material that was 
in fact contained in a foreign counterpart application. The Office 
requires multiple copies of submissions and Office actions so that the 
Office will have an appropriately redacted copy of the application that 
can be provided when the Office needs to provide a member of the public 
with such a copy. The Office requires EFS submission of a redacted copy 
of an application for publication because the Office must have the copy 
submitted via the most efficient means available (EFS) since the 
application will already be in the publication cycle by sixteen months 
from the earliest priority date. The Office does not treat applications 
for which a redacted copy is submitted for publication in the same 
manner as other applications because the filing of a redacted copy of 
an application for publication (unlike other applications) places a 
significant burden on the Office.
    Comment 66: One comment suggested that it was not clear how to 
indicate the portion of the redacted contents of an application for 
which a redacted copy is submitted for publication.
    Response: The redacted copy of the application being submitted for 
publication should simply not include the portions that have been 
redacted. The ``marked up'' copy of the application showing the 
redaction that is submitted for the application file should show the 
portions that have been redacted in brackets.
    Comment 67: One comment suggested that since maintaining the file 
of an application for which a redacted copy of the application was 
submitted for publication in a partially published/partially 
unpublished condition requires exception handling, these applicants 
should be charged a significant fee ($500) and not just the $130 
processing fee set forth in Sec. 1.17(i).
    Response: As indicated above, filing a redacted copy of an 
application for publication and maintaining a set of redacted papers in 
the application does place a significant burden on the Office. The $130 
processing fee set forth in Sec. 1.17(i), which must accompany each 
submission under Sec. 1.17(d)(1) or Sec. 1.17(d)(2) (Sec. 1.17(d)(3)) 
is considered an appropriate fee for this special handling.
    Comment 68: One comment suggested that the certificate of mailing 
provisions of Sec. 1.8 should apply to the filing of materials relating 
to submission of a redacted copy of an application for publication 
(Sec. 1.217).
    Response: Since the redacted copy of an application for publication 
must be submitted via EFS (and not via the mail), the certificate of 
mailing practice set forth in Sec. 1.8 is inapplicable to the 
submission of a redacted copy of an application for publication. In 
view of the significant burden that filing a redacted copy of an 
application for publication places on the Office, the Office considers 
it appropriate to require such an applicant to provide the Office with 
the document necessary for processing the application by means that 
ensure that such documents are promptly received in the Office.
    Comment 69: One comment suggested that the Office should provide an 
opportunity to correct a defective EFS publication submission for 
voluntary publication or republication of an application, rather than 
simply refunding the publication fee and not publishing the application 
as provided in Sec. 1.221.
    Response: The Office plans to treat a defective EFS publication 
submission by attempting to contact the submitter (by telephone) to 
obtain correction of the submission (with a new submission that is 
correct). The provision in Sec. 1.221 concerning the refunding of the 
publication fee and not publishing the application will apply in those 
situations in which the Office's attempts to contact the submitter or 
obtain correction of the EFS submission are unsuccessful.
    Comment 70: One comment suggested that the Office provide a box 
other than ``Box PCT'' in Sec. 1.417 for receipt of an international 
publication or copy of an English-language translation of an 
international application under 35 U.S.C. 154(d)(4) to avoid the 
commingling of these papers with other PCT submissions.
    Response: The Office does not consider a separate box (other than 
``Box PCT'') for copies of an international publication or copies of an 
English language translation of an international application under 35 
U.S.C. 154(d)(4) to be necessary. The Office will create such a 
separate box in the event that a separate box for copies of an 
international publication or copy of an English language translation of 
an international application under 35 U.S.C. 154(d)(4) proves to be 
necessary.
    Comment 71: One comment suggested that the Office draft a rule 
stating what fact situation must exist for an international application 
to have provisional rights protection in the United States (noting PCT 
Article 29(2)).
    Response: The Office is not charged with administering provisional 
rights under 35 U.S.C. 154(d) and the enforcement of provisional rights 
will not be via a proceeding in the Office. Therefore, the Office is 
not promulgating regulations concerning what situation must exist for 
any type of application to have provisional rights protection. See 35 
U.S.C. 2(b)(2)(A).
    Comment 72: Several comments suggested that the Office clarify the 
following issues concerning the treatment of sequence listings: (1) the 
latest date on which a sequence listing must be submitted to avoid a 
delay in the transfer of an application to the Technology Centers (and 
without reduction of any patent term

[[Page 57049]]

adjustment); (2) whether applications containing sequence listings that 
do not comply with Sec. 1.821 et seq. will be forwarded to the 
Technology Centers for substantive examination (or which requirements 
of Sec. 1.821 et seq. must be complied with before the application is 
forwarded to the Technology Centers for substantive examination); (3) 
whether non-compliance with the sequence listing requirements of 
Sec. 1.821 et seq. will be treated as strictly as non-compliance with 
the drawings requirements of Sec. 1.84 (and, if so, what changes will 
be implemented to reduce complications associated with the use of 
sequence listing authoring and submission software); and (4) precisely 
how an applicant is to make a reference to a previously filed sequence 
listing.
    Response: An application will not be transferred to the Technology 
Centers until it contains a sequence listing (if required) that 
complies with Sec. 1.821 et seq. The impact that a delay in filing a 
sequence listing (if required) that complies with Sec. 1.821 et seq. 
will have on patent term adjustment is set forth in 35 U.S.C. 
154(b)(2)(C)(ii) and Sec. 1.704(b).
    Sequence submission software for creating sequence listings is 
available for download, and is available to make it easier to comply. 
Applicants are not required to use this software, and need not do so if 
they feel it does not meet their needs. Applicants are only required to 
follow the format outlined in Sec. 1.821 et seq. Applicants may also 
obtain the ``checker'' software to check their submissions prior to 
sending them to the Office to reduce the chance of errors. This 
``checker'' software is also available for download.
    As discussed above, rather than permit an EFS copy of an 
application being submitted to the Office for eighteen-month 
publication purposes to simply contain a reference to a previously 
filed sequence listing, the Office is requiring that the EFS copy 
contain a text file copy of the sequence listing.

Classification

Administrative Procedure Act

    The changes to Secs. 1.19, 1.76 and 1.103 were not included in the 
Notice of Proposed Rulemaking. The change to Sec. 1.19 merely sets 
forth the fees for copies of patent application publications, the 
change to Sec. 1.76 merely provides that assignee information may be 
included on the application data sheet, and the change to Sec. 1.103 
merely sets forth the conditions under which the Office will defer 
examination of an application. Therefore, these changes concern only 
rules of Office procedure, and prior notice and an opportunity for 
public comment for these changes is not required pursuant to 5 U.S.C. 
553(b)(A), or any other law.

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 in this final rule do not have a 
significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). This final rule 
implements the eighteen-month publication provisions of Secs. 4501 
through 4508 of the American Inventors Protection Act of 1999. The 
changes in this final rule provide procedures for the eighteen-month 
publication of patent applications.
    An applicant may file a nonpublication request (opt-out of 
eighteen-month publication) if the invention disclosed in the 
application has not and will not be the subject of an application filed 
in another country, or under a multilateral international agreement, 
that requires eighteen-month publication. Since almost all small 
entities file patent applications only in the United States, almost all 
small entities can choose whether they want their applications to be 
subject to eighteen-month publication. The Office receives roughly 
60,000 applications each year from small entities. Based upon input 
from small entity groups during the legislative process, the Office 
expects that small entities will file a nonpublication request for 
roughly 30,000 applications (fifty percent) with the remaining 30,000 
applications being subject to eighteen-month publication. Since the 
current application allowance rate is roughly sixty-seven percent, 
roughly 20,000 applications subject to eighteen-month publication will 
be allowed, at which time a publication fee ($300) will be due. Since 
the publication fee is less than one-third of the combined cost of the 
application filing fee ($345) and patent issue fee ($605), there will 
not be a significant economic impact on a substantial number of small 
entities due to eighteen-month publication.

Executive Order 13132

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

Executive Order 12866

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

Paperwork Reduction Act

    This final rule involves information collection requirements that 
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 final rule have been 
reviewed and previously approved by OMB under OMB control numbers: 
0651-0021, 0651-0027, 0651-0031, 0651-0032, 0651-0033, and 0651-0034.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
3507(d)), the United States Patent and Trademark Office submitted an 
information collection package to OMB for its review and approval of 
the information collections under OMB control number 0651-0031 and 
0651-0032. The United States Patent and Trademark Office is submitting 
these information collections to OMB for its review and approval 
because this final rule adds the nonpublication request, rescission of 
the nonpublication request, electronic filing system copy of the 
application (for publication purposes), copy of the application file 
content showing redactions, and petition to accept a delayed priority 
claim to these collections.
    As discussed above, this final rule also involves currently 
approved information collections under OMB control numbers: 0651-0021, 
0651-0027, 0651-0033, and 0651-0034. The United States Patent and 
Trademark Office is not resubmitting those information collection 
packages to OMB for its review and approval because the changes in this 
final rule do not affect the information collection requirements 
associated with the information collections under those OMB control 
numbers.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information.

    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401, 
PCT/IB/328.
    Type of Review: Approved through September of 2000.
    Affected Public: Individuals or households, business or Other for-
profit

[[Page 57050]]

institutions, Federal Agencies or Employees, not-for-profit 
institutions, small businesses or organizations.
    Estimated Number of Respondents: 102,950.
    Estimated Time Per Response: 0.9538 hour.
    Estimated Total Annual Burden Hours: 98,195 hours.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify 
the filing of patent applications on the same invention in different 
countries. It provides for a centralized filing procedure and a 
standardized application format.

    OMB Number: 0651-0027.
    Title: Changes in Patent and Trademark Assignment Practices.
    Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
    Type of Review: Approved through May of 2002.
    Affected Public: Individuals or Households and Businesses or Other 
For-Profit Institutions.
    Estimated Number of Respondents: 209,040.
    Estimated Time Per Response: 0.5 hour.
    Estimated Total Annual Burden Hours: 104,520 hours.
    Needs and Uses: The Office records about 209,040 assignments or 
documents related to ownership of patent and trademark cases each year. 
The Office requires a cover sheet to expedite the processing of these 
documents and to ensure that they are properly recorded.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/30-31/42/43/61/62/63/64/67/68/91/92/
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: 2,231,365.
    Estimated Time Per Response: 0.46 hours.
    Estimated Total Annual Burden Hours: 1,018,736 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the Office concerning the examination of a 
specific application. The specific information required or which may be 
submitted includes: Information Disclosure Statements; Terminal 
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices; 
Petitions for Access; Powers to Inspect; Certificates of Mailing or 
Transmission; Statements under Sec. 3.73(b); Amendments, Petitions and 
their Transmittal Letters; and Deposit Account Order Forms.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
    Type of Review: Approved through October of 2002.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal 
Government.
    Estimated Number of Respondents: 334,100.
    Estimated Time Per Response: 8.95 hours.
    Estimated Total Annual Burden Hours: 2,990,260 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, and Plant Patent Application 
Declaration will assist applicants in complying with the requirements 
of the patent statute and regulations, and will further assist the 
Office in processing and examination of the application.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Approved through September of 2000.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal 
Government.
    Estimated Number of Respondents: 135,250.
    Estimated Time Per Response: 0.325 hour.
    Estimated Total Annual Burden Hours: 43,893 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to title 35, U.S.C., concerning the 
issuance of patents and related actions including correcting errors in 
printed patents, refiling of patent applications, requesting 
reexamination of a patent, and requesting a reissue patent to correct 
an error in a patent. The affected public includes any individual or 
institution whose application for a patent has been allowed or who 
takes action as covered by the applicable rules.

    OMB Number: 0651-0034.
    Title: Secrecy/License to Export.
    Form Numbers: None.
    Type of Review: Approved through January of 2001.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal 
Government.
    Estimated Number of Respondents: 2,187.
    Estimated Time Per Response: 0.67 hour.
    Estimated Total Annual Burden Hours: 1,476 hours.
    Needs and Uses: In the interest of national security, patent laws 
and regulations place certain limitations on the disclosure of 
information contained in patents and patent applications and on the 
filing of applications for patent in foreign countries.
    The principal impact of the changes in this final rule is to 
implement the changes to Office practice necessitated by Secs. 4501 
through 4508 of the American Inventors Protection Act of 1999 (enacted 
into law by Sec. 1000(a)(9), Division B, of Public Law 106-113).
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, United States Patent and Trademark Office, Washington, 
D.C. 20231, or to the Office of Information and Regulatory Affairs of 
OMB, New Executive Office Building, 725 17th Street, N.W., Room 10235, 
Washington, D.C. 20503, Attention: Desk Officer for the United States 
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.

[[Page 57051]]

List of Subjects

37 CFR Part 1

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

37 CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

    For the reasons set forth in the preamble, 37 CFR Parts 1 and 5 are 
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 1.9 is amended by revising paragraph (c) to read as 
follows:


Sec. 1.9  Definitions.

* * * * *
    (c) A published application as used in this chapter means an 
application for patent which has been published under 35 U.S.C. 122(b).
* * * * *

    3. Section 1.11 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the 
file of an abandoned published application, except if a redacted copy 
of the application was used for the patent application publication, a 
patent, or a statutory invention registration are open to inspection by 
the public, and copies may be obtained upon the payment of the fee set 
forth in Sec. 1.19(b)(2). See Sec. 2.27 for trademark files.
* * * * *

    4. Section 1.12 is amended by revising paragraphs (a)(1) and (b) to 
read as follows:


Sec. 1.12  Assignment records open to public inspection.

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

    5. Section 1.13 is revised to read as follows:


Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents, patent application 
publications, and trademark registrations and of any records, books, 
papers, or drawings within the jurisdiction of the United States Patent 
and Trademark Office and open to the public, will be furnished by the 
United States Patent and Trademark Office to any person, and copies of 
other records or papers will be furnished to persons entitled thereto, 
upon payment of the appropriate fee.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records, books, papers, or 
drawings within the jurisdiction of the United States Patent and 
Trademark Office and open to the public or persons entitled thereto 
will be authenticated by the seal of the United States Patent and 
Trademark Office and certified by the Commissioner, or in his or her 
name attested by an officer of the United States Patent and Trademark 
Office authorized by the Commissioner, upon payment of the fee for the 
certified copy.

    6. Section Sec. 1.14 is amended by revising paragraphs (a), (b), 
(c), (e), (i) and (j) to read as follows:


 1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b) are 
generally preserved in confidence pursuant to 35 U.S.C. 122(a). 
Information concerning the filing, pendency, or subject matter of an 
application for patent, including status information, and access to the 
application, will only be given to the public as set forth in Sec. 1.11 
or in this section.
    (1) Status information is:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b); and
    (iii) The application ``numerical identifier'' which may be:
    (A) The eight-digit application number (the two-digit series code 
plus the six-digit serial number); or
    (B) The six-digit serial number plus any one of the filing date of 
the national application, the international filing date, or date of 
entry into the national stage.
    (2) Access is defined as providing the application file for review 
and copying of any material in the application file.
    (b) When status information may be supplied. Status information of 
an application may be supplied by the Office to the public if any of 
the following apply:
    (1) Access to the application is available pursuant to paragraph 
(e) of this section;
    (2) The application is referred to by its numerical identifier in a 
published patent document (e.g., a U.S. patent, a U.S. patent 
application publication, or an international application publication), 
or in a U.S. application open to public inspection (Sec. 1.11(b), or 
paragraph (e)(2)(i) or (e)(2)(ii) of this section);
    (3) The application is a published international application in 
which the United States of America has been indicated as a designated 
state; or
    (4) The application claims the benefit of the filing date of an 
application for which status information may be provided pursuant to 
paragraphs (b)(1) through (b)(3) of this section.
    (c) When copies may be supplied. A copy of an application-as-filed 
or a file wrapper and contents may be supplied by the Office to the 
public[, subject to paragraph (i) of this section (which addresses 
international applications),] if any of the following apply:
    (1) Application-as-filed.
    (i) If a U.S. patent application publication or patent incorporates 
by reference, or includes a specific reference under 35 U.S.C. 119(e) 
or 120 to, a pending or abandoned application, a copy of that 
application-as-filed may be provided to any person upon written request 
including the fee set forth in Sec. 1.19(b)(1); or
    (ii) If an international application, which designates the U.S. and 
which has been published in accordance with PCT Article 21(2), 
incorporates by

[[Page 57052]]

reference or claims priority under PCT Article 8 to a pending or 
abandoned U.S. application, a copy of that application-as-filed may be 
provided to any person upon written request including a showing that 
the publication of the application in accordance with PCT Article 21(2) 
has occurred and that the U.S. was designated, and upon payment of the 
appropriate fee set forth in Sec. 1.19(b)(1).
    (2) File wrapper and contents. A copy of the specification, 
drawings, and all papers relating to the file of an abandoned or 
pending published application may be provided to any person upon 
written request, including the fee set forth in Sec. 1.19(b)(2). If a 
redacted copy of the application was used for the patent application 
publication, the copy of the specification, drawings, and papers may be 
limited to a redacted copy.
* * * * *
    (e) Public access to a pending or abandoned application. Access to 
an application may be provided to any person[, subject to paragraph (i) 
of this section,] if a written request for access is submitted, the 
application file is available, and any of the following apply:
    (1) The application is open to public inspection pursuant to 
Sec. 1.11(b); or
    (2) The application is abandoned, it is not within the file jacket 
of a pending application under Sec. 1.53(d), and it is referred to:
    (i) In a U.S. patent application publication or patent;
    (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; 
or
    (iii) In an international application which designates the U.S. and 
is published in accordance with PCT Article 21(2).
* * * * *
    (i) International applications.
    (1) Copies of international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be furnished in accordance with PCT Articles 30 
and 38 and PCT Rules 94.2 and 94.3, upon written request including a 
showing that the publication of the application has occurred and that 
the U.S. was designated, and upon payment of the appropriate fee (see 
Sec. 1.19(b)(2) or 1.19(b)(3)), if:
    (i) With respect to the Home Copy, the international application 
was filed with the U.S. Receiving Office;
    (ii) With respect to the Search Copy, the U.S. acted as the 
International Searching Authority; or
    (iii) With respect to the Examination Copy, the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.
    (2) A copy of an English language translation of an international 
application which has been filed in the United States Patent and 
Trademark Office pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished 
upon written request including a showing that the publication of the 
application in accordance with PCT Article 21(2) has occurred and that 
the U.S. was designated, and upon payment of the appropriate fee 
(Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
    (3) Access to international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be furnished in accordance with PCT Articles 30 
and 38 and PCT Rules 94.2 and 94.3, upon written request including a 
showing that the publication of the application has occurred and that 
the U.S. was designated.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (c)(1) of this section will not be 
provided prior to the international publication of the application 
pursuant to PCT Article 21(2).
    (5) Access to international application files under paragraphs (e) 
and (i)(3) of this section will not be permitted with respect to the 
Examination Copy in accordance with PCT Article 38.
    (j) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of all or part 
of an application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition by a member of 
the public seeking access to, or copies of, all or part of any pending 
or abandoned application preserved in confidence pursuant to paragraph 
(a) of this section, or any related papers, must include:
    (1) The fee set forth in Sec. 1.17(h); and
    (2) A showing that access to the application is necessary to carry 
out an Act of Congress or that special circumstances exist which 
warrant petitioner being granted access to all or part of the 
application.

    7. Section 1.17 is amended by revising the section heading and 
paragraphs (h), (i), (l), (m) and (p) and adding paragraph (t) to read 
as follows:


Sec. 1.17  Patent application and reexamination processing fees.

* * * * *
    (h) For filing a petition under one of the following sections which 
refers to this paragraph: $130.00.
    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.47--for filing by other than all the inventors or a person 
not the inventor.
    Sec. 1.53(e)--to accord a filing date.
    Sec. 1.59--for expungement and return of information.
    Sec. 1.84--for accepting color drawings or photographs.
    Sec. 1.91--for entry of a model or exhibit.
    Sec. 1.102--to make an application special.
    Sec. 1.103(a)--to suspend action in an application.
    Sec. 1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec. 1.182--for decision on a question not specifically provided 
for.
    Sec. 1.183--to suspend the rules.
    Sec. 1.295--for review of refusal to publish a statutory invention 
registration.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.
    Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec. 1.378(e)--for reconsideration of decision on petition refusing 
to accept delayed payment of maintenance fee in an expired patent.
    Sec. 1.644(e)--for petition in an interference.
    Sec. 1.644(f)--for request for reconsideration of a decision on 
petition in an interference.
    Sec. 1.666(b)--for access to an interference settlement agreement.
    Sec. 1.666(c)--for late filing of interference settlement 
agreement.
    Sec. 1.741(b)--to accord a filing date to an application under 
Sec. 1.740 for extension of a patent term.
    Sec. 5.12--for expedited handling of a foreign filing license.
    Sec. 5.15--for changing the scope of a license.
    Sec. 5.25--for retroactive license.
    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $130.00.
    Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based 
on an error in small entity status.
    Sec. 1.41--for supplying the name or names of the inventor or 
inventors after

[[Page 57053]]

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(b)(3)--to convert a provisional application filed under 
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
    Sec. 1.55--for entry of late priority papers.
    Sec. 1.99(e)--for processing a belated submission under Sec. 1.99.
    Sec. 1.103(b)--for requesting limited suspension of action, 
continued prosecution application (Sec. 1.53(d)).
    Sec. 1.103(c)--for requesting limited suspension of action, request 
for continued examination (Sec. 1.114).
    Sec. 1.103(d)--for requesting deferred examination of an 
application.
    Sec. 1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
    Sec. 1.221--for requesting voluntary publication or republication 
of an application.
    Sec. 1.497(d)--for filing an oath or declaration pursuant to 35 
U.S.C. 371(c)(4) naming an inventive entity different from the 
inventive entity set forth in the international stage.
    Sec. 3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or 
for the revival of an unavoidably terminated reexamination proceeding 
under 35 U.S.C. 133 (Sec. 1.137(a)):

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

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

    By a small entity (Sec. 1.27(a)): $620.00.
    By other than a small entity: $1,240.00.

* * * * *
    (p) For an information disclosure statement under Sec. 1.97(c) or 
(d) or a submission under Sec. 1.99: $180.00.
* * * * *
    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Secs. 1.55 
and 1.78): $1,240.00.

    8. Section 1.18 is amended by adding paragraph (d) to read as 
follows:


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

* * * * *

Publication fee............................................     $300.00.
 

* * * * *

    9. Section 1.19 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.19  Document supply fees.

* * * * *
    (a) Uncertified copies of patent application publications and 
patents:
    (1) Printed copy of the paper portion of a patent application 
publication or patent, including a design patent, statutory invention 
registration, or defensive publication document:

(i) Regular service, which includes preparation of copies by      $3.00.
 the Office within two to three business days and delivery by
 United States Postal Service or to an Office Box; and
 preparation of copies by the Office within one business day of
 receipt and delivery by electronic means (e.g., facsimile,
 electronic mail)..............................................
(ii) Next business day delivery to Office Box..................   $6.00.
(iii) Expedited delivery by commercial delivery service........  $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        $25.00.
 statutory invention registration containing a color drawing...
 

* * * * *

    10. Section 1.24 is removed and reserved.


Sec. 1.24  [Removed and Reserved]

    11. Section 1.52 is amended by revising paragraph (d) to read as 
follows:


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

* * * * *
    (d) A nonprovisional or provisional application may be filed in a 
language other than English.
    (1) Nonprovisional application. If a nonprovisional application is 
filed in a language other than English, an English language translation 
of the non-English language application, a statement that the 
translation is accurate, and the processing fee set forth in 
Sec. 1.17(i) are required. If these items are not filed with the 
application, applicant will be notified and given a period of time 
within which they must be filed in order to avoid abandonment.
    (2) Provisional application. If a provisional application is filed 
in a language other than English, an English language translation of 
the non-English language provisional application will not be required 
in the provisional application. See Sec. 1.78(a) for the requirements 
for claiming the benefit of such provisional application in a 
nonprovisional application.
* * * * *

    12. Section 1.55 is amended by revising paragraph (a) and adding 
paragraph (c) to read as follows:


Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a) through (d), 172, 
and 365(a).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior foreign application. This time period is not extendable. The 
claim must identify the foreign application for which priority is 
claimed, as well as any foreign application for the same subject matter 
and having a filing date before that of the application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing. 
The time period in this paragraph does not apply to an application for 
a design patent.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the 
claim for priority must be made during the pendency of the application 
and within the time limit set forth in the PCT and the Regulations 
under the PCT.
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event, be filed before the patent is granted. If the claim for priority 
or the certified copy of the foreign application is filed after the 
date the issue fee is paid, it must be accompanied by the processing 
fee set forth in Sec. 1.17(i), but the patent will not include the 
priority claim unless corrected by a certificate of correction under 35 
U.S.C. 255 and Sec. 1.323.
    (3) When the application becomes involved in an interference 
(Sec. 1.630), when necessary to overcome the date of

[[Page 57054]]

a reference relied upon by the examiner, or when deemed necessary by 
the examiner, the Office may require that the claim for priority and 
the certified copy of the foreign application be filed earlier than 
provided in paragraphs (a)(1) or (a)(2) of this section.
    (4) An English language translation of a non-English language 
foreign application is not required except when the application is 
involved in an interference (Sec. 1.630), when necessary to overcome 
the date of a reference relied upon by the examiner, or when 
specifically required by the examiner. If an English language 
translation is required, it must be filed together with a statement 
that the translation of the certified copy is accurate.
* * * * *
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) not presented within the time period provided by paragraph (a) 
of this section is considered to have been waived. If a claim for 
priority under 35 U.S.C. 119(a)-(d) or 365(a) is presented after the 
time period provided by paragraph (a) of this section, the claim may be 
accepted if the claim identifying the prior foreign application by 
specifying its application number, country (or intellectual property 
authority), and the day, month, and year of its filing was 
unintentionally delayed. A petition to accept a delayed claim for 
priority under 35 U.S.C. 119(a)-(d) or 365(a) must be accompanied by:
    (1) The surcharge set forth in Sec. 1.17(t); and
    (2) A statement that the entire delay between the date the claim 
was due under paragraph (a)(1) of this section and the date the claim 
was filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.

    13. Section 1.72 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.72  Title and abstract.

    (a) The title of the invention may not exceed 500 characters in 
length and must be as short and specific as possible. Characters that 
cannot be captured and recorded in the Office's automated information 
systems may not be reflected in the Office's records in such systems or 
in documents created by the Office. Unless the title is supplied in an 
application data sheet (Sec. 1.76), the title of the invention should 
appear as a heading on the first page of the specification.
* * * * *

    14. Section 1.76 is amended by adding a new paragraph (b)(7) to 
read as follows:


Sec. 1.76  Application data sheet.

* * * * *
    (b) * * *
    (7) Assignee information. This information includes the name 
(either person or juristic entity) and address of the assignee of the 
entire right, title, and interest in an application. Providing this 
information in the application data sheet does not substitute for 
compliance with any requirement of part 3 of this chapter to have an 
assignment recorded by the Office.
* * * * *

    15. Section 1.78 is amended by revising paragraphs (a)(2), (a)(3), 
and (a)(4), and adding new paragraphs (a)(5) and (a)(6) to read as 
follows:


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

    (a)(1) * * *
    (2) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application claiming the benefit of 
one or more prior filed copending nonprovisional applications or 
international applications designating the United States of America 
must contain a reference to each such prior application, identifying it 
by application number (consisting of the series code and serial number) 
or international application number and international filing date and 
indicating the relationship of the applications. This reference must be 
submitted during the pendency of the application, and within the later 
of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior application. This time 
period is not extendable. Unless the reference required by this 
paragraph is included in an application data sheet (Sec. 1.76), the 
specification must contain or be amended to contain such reference in 
the first sentence following the title. If the application claims the 
benefit of an international application, the first sentence of the 
specification must include an indication of whether the international 
application was published under PCT Article 21(2) in English 
(regardless of whether benefit for such application is claimed in the 
application data sheet). The request for a continued prosecution 
application under Sec. 1.53(d) is the specific reference required by 35 
U.S.C. 120 to the prior application. The identification of an 
application by application number under this section is the specific 
reference required by 35 U.S.C. 120 to every application assigned that 
application number. Cross references to other related applications may 
be made when appropriate (see Sec. 1.14). Except as provided in 
paragraph (a)(3) of this section, the failure to timely submit the 
reference required by 35 U.S.C. 120 and this paragraph is considered a 
waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior 
application. The time period set forth in this paragraph does not apply 
to an application for a design patent.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented in a nonprovisional application after the 
time period provided by paragraph (a)(2) of this section, the claim 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior application by application number or 
international application number and international filing date was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior filed application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2) of this section and the date the claim 
was filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
    (4) A nonprovisional application other than for a design patent may 
claim an invention disclosed in one or more prior filed provisional 
applications. In order for a nonprovisional application to claim the 
benefit of one or more prior filed provisional applications, each prior 
provisional application must name as an inventor at least one inventor 
named in the later filed nonprovisional application and disclose the 
named inventor's invention claimed in at least one claim of the later 
filed nonprovisional application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior provisional 
application must be entitled to a filing date as set forth in 
Sec. 1.53(c), and the basic filing fee set forth in Sec. 1.16(k) must 
be paid within the time period set forth in Sec. 1.53(g).
    (5) Any nonprovisional application claiming the benefit of one or 
more prior filed copending provisional applications must contain a 
reference to each such prior provisional application, identifying it as 
a provisional

[[Page 57055]]

application, and including the provisional application number 
(consisting of series code and serial number), and, if the provisional 
application is filed in a language other than English, an English 
language translation of the non-English language provisional 
application and a statement that the translation is accurate. This 
reference and English language translation of a non-English language 
provisional application must be submitted during the pendency of the 
nonprovisional application, and within the later of four months from 
the actual filing date of the nonprovisional application or sixteen 
months from the filing date of the prior provisional application. This 
time period is not extendable. Unless the reference required by this 
paragraph is included in an application data sheet (Sec. 1.76), the 
specification must contain or be amended to contain such reference in 
the first sentence following the title. Except as provided in paragraph 
(a)(6) of this section, the failure to timely submit the reference and 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and this paragraph is 
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior 
provisional application.
    (6) If the reference or English language translation of a non-
English language provisional application required by 35 U.S.C. 119(e) 
and paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5) of this 
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior 
filed provisional application may be accepted during the pendency of 
the nonprovisional application if the reference identifying the prior 
application by provisional application number and any English language 
translation of a non-English language provisional application were 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed 
provisional application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5) of this section and the date the claim 
was filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
* * * * *

    16. Section 1.84 is amended by revising paragraphs (a)(2), (e), and 
(j) to read as follows:


Sec. 1.84  Standards for drawings.

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

    The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided by the Office 
upon request and payment of the necessary fee.
* * * * *
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be reasonably free from cracks, creases, and folds. 
Only one side of the sheet may be used for the drawing. Each sheet must 
be reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must be developed on 
paper meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
See paragraph (b) of this section for other requirements for 
photographs.
* * * * *
    (j) Front page view. The drawing must contain as many views as 
necessary to show the invention. One of the views should be suitable 
for inclusion on the front page of the patent application publication 
and patent as the illustration of the invention. Views must not be 
connected by projection lines and must not contain center lines. 
Applicant may suggest a single view (by figure number) for inclusion on 
the front page of the patent application publication and patent.
* * * * *

    17. Section 1.85 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.85  Corrections to drawings.

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

    18. Section 1.98 is amended by revising paragraphs (a)(2) and (b) 
to read as follows:


Sec. 1.98  Content of information disclosure statement.

    (a) * * *
    (2) A legible copy of:
    (i) Each U.S. patent application publication and U.S. and foreign 
patent;
    (ii) Each publication or that portion which caused it to be listed;
    (iii) For each cited pending U.S. application, the application 
specification including the claims, and any drawing of the application, 
or that portion of the application which caused it to be listed 
including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed; and
* * * * *
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue 
date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement shall be identified

[[Page 57056]]

by applicant, patent application publication number, and publication 
date.
    (3) Each U.S. application listed in an information disclosure 
statement must be identified by the inventor, application number, and 
filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement 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.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, author (if any), title, relevant pages 
of the publication, date, and place of publication.
* * * * *

    19. A new Sec. 1.99 is added to read as follows:


Sec. 1.99  Third-party submission in published application.

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

    20.Section 1.103 is amended by redesignating paragraphs (d) through 
(f) as (e) through (g) and adding a new paragraph (d) to read as 
follows:


Sec. 1.103  Suspension of action by the Office.

* * * * *
    (d) Deferral of examination. On request of the applicant, the 
Office may grant a deferral of examination under the conditions 
specified in this paragraph for a period not extending beyond three 
years from the earliest filing date for which a benefit is claimed 
under title 35, United States Code. A request for deferral of 
examination under this paragraph must include the publication fee set 
forth in Sec. 1.18(d) and the processing fee set forth in Sec. 1.17(i). 
A request for deferral of examination under this paragraph will not be 
granted unless:
    (1) The application is an original utility or plant application 
filed under Sec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance with Sec. 1.494 or 
Sec. 1.495;
    (2) The applicant has not filed a nonpublication request under 
Sec. 1.213(a), or has filed a request under Sec. 1.213(b) to rescind a 
previously filed nonpublication request;
    (3) The application is in condition for publication as provided in 
Sec. 1.211(c); and
    (4) The Office has not issued either an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
* * * * *

    21. Section 1.104 is amended by removing paragraph (a)(5) and 
revising paragraph (d)(1) to read as follows:


Sec. 1.104  Nature of Examination.

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

    22. Section 1.130 is amended by revising the section heading and 
paragraph (a) to read as follows:


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

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

[[Page 57057]]

    (1) A terminal disclaimer in accordance with Sec. 1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 
104.
* * * * *

    23. Section 1.131 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.131  Affidavit or declaration of prior invention.

    (a) When any claim of an application or a patent under 
reexamination is rejected, the inventor of the subject matter of the 
rejected claim, the owner of the patent under reexamination, or the 
party qualified under Secs. 1.42, 1.43, or 1.47, may submit an 
appropriate oath or declaration to establish invention of the subject 
matter of the rejected claim prior to the effective date of the 
reference or activity on which the rejection is based. The effective 
date of a U.S. patent, U.S. patent application publication, or 
international application publication under PCT Article 21(2) is the 
earlier of its publication date or date that it is effective as a 
reference under 35 U.S.C. 102(e). Prior invention may not be 
established under this section in any country other than the United 
States, a NAFTA country, or a WTO member country. Prior invention may 
not be established under this section before December 8, 1993, in a 
NAFTA country other than the United States, or before January 1, 1996, 
in a WTO member country other than a NAFTA country. Prior invention may 
not be established under this section if either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in 
Sec. 1.601(n); or
    (2) The rejection is based upon a statutory bar.
* * * * *

    24. 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, any evidence submitted to traverse the 
rejection or objection on a basis not otherwise provided for must be by 
way of an oath or declaration under this section.

    25. Section 1.137 is revised to read as follows:


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

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination proceeding terminated 
under Secs. 1.550(d) or 1.957(b) or (c), or a lapsed patent. A 
grantable petition pursuant to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Commissioner that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this 
paragraph was unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
proceeding terminated under Secs. 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this paragraph must be 
accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable 
petition pursuant to this paragraph was unintentional. The Commissioner 
may require additional information where there is a question whether 
the delay was unintentional; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed on 
or after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or 
any outstanding balance. In an application, abandoned for failure to 
pay the publication fee, the required reply must include payment of the 
publication fee.
    (d) Terminal disclaimer. (1) Any petition to revive pursuant to 
this section in a design application must be accompanied by a terminal 
disclaimer and fee as set forth in Sec. 1.321 dedicating to the public 
a terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. Any petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, must be accompanied by a terminal disclaimer and 
fee as set forth in Sec. 1.321 dedicating to the public a terminal part 
of the term of any patent granted thereon equivalent to the lesser of:
    (i) The period of abandonment of the application; or
    (ii) The period extending beyond twenty years from the date on 
which the application for the patent was filed in the United States or, 
if the application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this 
section must also apply to any patent granted on a continuing utility 
or plant application filed 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 (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 
8, 1995, to lapsed patents, or to reexamination proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated reexamination proceeding, or lapsed patent upon petition 
filed pursuant to this section, to be considered timely, must be filed 
within two months of the decision refusing to revive or within such 
time as set in the decision. Unless a decision indicates otherwise, 
this time period may be extended under:
    (1) The provisions of Sec. 1.136 for an abandoned application or 
lapsed patent;
    (2) The provisions of Sec. 1.550(c) for a terminated ex parte 
reexamination proceeding filed under Sec. 1.510; or
    (3) The provisions of Sec. 1.956 for a terminated inter partes 
reexamination proceeding filed under Sec. 1.913.

[[Page 57058]]

    (f) Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The 
reply requirement of paragraph (c) of this section is met by the 
notification of such filing in a foreign country or under a 
multinational treaty, but the filing of a petition under this section 
will not operate to stay any period for reply that may be running 
against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and Sec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.

    26.Section 1.138 is amended by revising paragraph (a) and adding 
paragraph (c) to read as follows:


Sec. 1.138  Express abandonment.

    (a) An application may be expressly abandoned by filing a written 
declaration of abandonment identifying the application in the United 
States Patent and Trademark Office. Express abandonment of the 
application may not be recognized by the Office before the date of 
issue or publication unless it is actually received by appropriate 
officials in time to act.
* * * * *
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
section including the fee set forth in Sec. 1.17(h) in sufficient time 
to permit the appropriate officials to recognize the abandonment and 
remove the application from the publication process. Applicant should 
expect that the petition will not be granted and the application will 
be published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.

    27. Section 1.165 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.165  Plant drawings.

* * * * *
    (b) The drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs and a black and white photocopy that 
accurately depicts, to the extent possible, the subject matter shown in 
the color drawing or photograph must be submitted.

    28. A new, undesignated center heading and new Secs. 1.211, 1.213, 
1.215, 1.217, 1.219, and 1.221 are added to Subpart B-National 
Processing Provisions to read as follows:

Publication of Applications


Sec. 1.211  Publication of applications.

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


Sec. 1.213  Nonpublication request.

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

[[Page 57059]]

international application. The failure to timely notify the Office of 
the filing of such foreign or international application shall result in 
abandonment of the application in which the nonpublication request was 
submitted (35 U.S.C. 122(b)(2)(B)(iii)).


Sec. 1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the application papers 
deposited on the filing date of the application, as well as the 
executed oath or declaration submitted to complete the application, and 
any application papers or drawings submitted in reply to a 
preexamination notice requiring a title and abstract in compliance with 
Sec. 1.72, application papers in compliance with Sec. 1.52, drawings in 
compliance with Sec. 1.84, or a sequence listing in compliance with 
Secs. 1.821 through 1.825, except as otherwise provided in this 
section. The patent application publication will not include any 
amendments, including preliminary amendments, unless applicant supplies 
a copy of the application containing the amendment pursuant to 
paragraph (c) of this section.
    (b) If applicant wants the patent application publication to 
include assignee information, the applicant must include the assignee 
information on the application transmittal sheet or the application 
data sheet (Sec. 1.76). Assignee information may not be included on the 
patent application publication unless this information is provided on 
the application transmittal sheet or application data sheet included 
with the application on filing. Providing this information on the 
application transmittal sheet or the application data sheet does not 
substitute for compliance with any requirement of part 3 of this 
chapter to have an assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended during examination, provided that 
applicant supplies such a copy in compliance with the Office electronic 
filing system requirements within one month of the actual filing date 
of the application or fourteen months of the earliest filing date for 
which a benefit is sought under title 35, United States Code, whichever 
is later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as 
provided in paragraph (a) of this section. If, however, the Office has 
not started the publication process, the Office may use an untimely 
filed copy of the application supplied by the applicant under paragraph 
(c) of this section in creating the patent application publication.


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

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating any part or 
description of the invention that is not also contained in any of the 
corresponding applications filed in a foreign country. The Office will 
publish the application as provided in Sec. 1.215(a) unless the 
applicant files a redacted copy of the application in compliance with 
this section within sixteen months after the earliest filing date for 
which a benefit is sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted 
copy of the application is submitted to the Office. If the redacted 
copy of the application does not comply with the Office electronic 
filing system requirements, the Office will publish the application as 
provided in Sec. 1.215(a).
    (c) The applicant must also concurrently submit in paper 
(Sec. 1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted 
under this section to any person upon written request pursuant to 
Sec. 1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including 
any desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or 
description of the invention that was not contained in the redacted 
copy of the application submitted for publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.


Sec. 1.219  Early publication.

    (a) Applications that will be published under Sec. 1.211 may be 
published earlier than as set forth in Sec. 1.211(a) at the request of 
the applicant.

[[Page 57060]]

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


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

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

    29.Section 1.291 is amended by revising paragraph (a)(1) to read as 
follows:


Sec. 1.291  Protests by the public against pending applications.

    (a) * * *
    (1) The protest is submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first; and
* * * * *

    30. Section 1.292 is amended by revising paragraph (b)(3) to read 
as follows:


Sec. 1.292  Public use proceedings.

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

    31. Section 1.311 is revised to read as follows:


Sec. 1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled 
to a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated in Sec. 1.33. The 
notice of allowance shall specify a sum constituting the issue fee 
which must be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. The sum 
specified in the notice of allowance may also include the publication 
fee, in which case the issue fee and publication fee (Sec. 1.211(f)) 
must both be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. This 
three-month period is not extendable.
    (b) An authorization to charge the issue or other post-allowance 
fees set forth in Sec. 1.18 to a deposit account may be filed in an 
individual application only after mailing of the notice of allowance. 
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
    (2) A completed Office-provided issue fee transmittal form (where 
no issue fee has been submitted).

    32. A new Sec. 1.417 is added to read as follows:


Sec. 1.417.  Submission of translation of international application.

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

    33. Section 1.494 is amended by revising paragraph (f) to read as 
follows:


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

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

    34. Section 1.495 is amended by revising paragraph (g) to read as 
follows:


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

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

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

    35. 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.; 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).

    36. Section 5.1 is amended by revising paragraph (e) to read as 
follows:


Sec. 5.1  Applications and correspondence involving national security.

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

[[Page 57061]]

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

    Dated: September 12, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-23822 Filed 9-19-00; 8:45 am]
BILLING CODE 3510-16-P