[Federal Register Volume 66, Number 249 (Friday, December 28, 2001)]
[Rules and Regulations]
[Pages 67087-67096]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-31872]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 010815207-1285-03]
RIN 0651-AB41


Requirements for Claiming the Benefit of Prior-Filed Applications 
Under Eighteen-Month Publication of Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: In implementing the provisions of the American Inventors 
Protection Act of 1999 related to the eighteen-month publication of 
patent applications, the United States Patent and Trademark Office 
(Office) revised the rules of practice related to requirements for 
claiming the benefit of a prior-filed application. The Office is now 
revising the time period for claiming the benefit of a prior-filed 
application in an application filed under the Patent Cooperation Treaty 
(PCT), revising the time period for filing an English language 
translation of a non-English language provisional application, and 
making other technical corrections to the rules of practice related to 
eighteen-month publication.

EFFECTIVE DATE: December 28, 2001.

FOR FURTHER INFORMATION CONTACT: Robert A. Clarke or Joni Y. Chang, 
Legal Advisors, Office of Patent Legal Administration, by telephone at 
(703) 308-6906, or by mail addressed to: Box Comments--Patents, 
Commissioner for Patents, Washington, DC 20231, or by facsimile to 
(703) 872-9399, marked to the attention of Robert A. Clarke.

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 
1999 was enacted into law on November 29, 1999. See Pub. L. 106-113, 
113 Stat. 1501, 1501A-552 through 1501A-591 (1999). The American 
Inventors Protection Act of 1999 contained a number of changes to title 
35, United States Code, including provisions for the publication of 
pending applications for patent, with certain exceptions, 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''). The Office implemented the 
eighteen-month publication provisions of the American Inventors 
Protection Act of 1999 in a final rule published in September of 2000. 
See Changes to Implement Eighteen-Month Publication of Patent

[[Page 67088]]

Applications, 65 FR 57023 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 
63 (Oct. 10, 2000) (final rule).
    Section 4503(a) of the American Inventors Protection Act of 1999 
amended 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 identifying the foreign application is filed at such 
time during the pendency of the application as required by the Office. 
Section 4503(b) of the American Inventors Protection Act of 1999 
amended 35 U.S.C. 119(e) and 120 to provide that no application shall 
be entitled to the benefit of a prior-filed application unless an 
amendment containing the specific reference to the prior-filed 
application is submitted at such time during the pendency of the 
application as required by the Office. Section 4503 of the American 
Inventors Protection Act of 1999 also amended 35 U.S.C. 119 and 120 to 
permit the Office to establish procedures for accepting an 
unintentionally delayed claim for the benefit of a prior-filed 
application. Section 4503 of the American Inventors Protection Act of 
1999 applies to applications filed under 35 U.S.C. 111 on or after 
November 29, 2000, and to applications entering the national stage 
after compliance with 35 U.S.C. 371 that resulted from international 
applications filed on or after November 29, 2000. See Pub. L. 106-113, 
Sec. 4508, 113 Stat. at 1501A-566 through 1501A-567. This final rule 
amends 37 CFR 1.55 and 1.78 to: (1) Revise the requirements for 
claiming the benefit of a prior-filed application in an application 
filed under the PCT; (2) revise the time period and requirements for 
filing an English language translation of a non-English language 
provisional application; and (3) expressly indicate that the time 
period requirements which implement the provisions of Sec. 4503 of the 
American Inventors Protection Act of 1999 do not apply to applications 
filed before November 29, 2000.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.14: Section 1.14(i)(2) is amended to correct its 
reference to ``35 U.S.C. 154(d)(4) (formerly indicated as ``35 U.S.C. 
154(2)(d)(4)'').
    Section 1.55: Section 1.55(a)(1)(i) is amended such that the rules 
of practice expressly indicate that the time periods in 
Sec. 1.55(a)(1)(i) do not apply in an application under 35 U.S.C. 
111(a) if the application is: (1) an application for a design patent; 
or (2) an application filed before November 29, 2000. The Office 
indicated that the changes to Sec. 1.55 (and Sec. 1.78) to implement 
eighteen-month publication applied only to applications filed on or 
after November 29, 2000. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, 65 FR at 57024, 1239 Off. Gaz. Pat. 
Office at 63. The Office, however, has received enough inquiries about 
whether the time periods set forth in Sec. 1.55(a)(1)(i) (and 
Sec. 1.78(a)(2) and Sec. 1.78(a)(5)) apply to particular applications 
that the Office has decided to place this information in Sec. 1.55 (and 
Sec. 1.78) itself.
    Section 1.55(c) is amended to expressly indicate that a petition 
under Sec. 1.55(c) to accept the delayed claim must also be accompanied 
by the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and 
Sec. 1.55) for priority to the prior foreign application, unless 
previously submitted.
    Section 1.78: Section 1.78(a)(1) is amended to Make its provisions 
applicable to international applications designating the United States 
of America. The phrase ``nonprovisional application'' as used in the 
rules of practice means either an application filed under 35 U.S.C. 
111(a) or an international application filed under 35 U.S.C. 363 that 
entered the national stage after compliance with 35 U.S.C. 371. See 
Sec. 1.9(a)(3). Thus, provisions which apply only to a nonprovisional 
application (e.g., the requirement in Sec. 1.78(a)(2)(iii) for a 
specific reference in an application data sheet (Sec. 1.76) or the 
specification) do not apply to any international application that does 
not enter national stage processing under 35 U.S.C. 371. The specific 
reference requirements of 35 U.S.C. 119(e) and 120 are met in such an 
international application by a specific reference to the prior-filed 
application in the international application papers (e.g., in the 
Request (PCT Rule 4.10 and Sec. 1.434(d)(2)), or a correction or 
addition in accordance with PCT Rule 26bis).
    Section 1.78(a)(2) is amended to place its provisions in separate 
paragraphs (a)(2)(i) through (a)(2)(iv) for clarity. Section 1.78(a)(2) 
is also amended to make its provisions applicable to international 
applications designating the United States of America, and to set forth 
the time period for making a claim (providing the specific reference 
required by Sec. 1.78(a)(2)(i)) for both an application filed under 35 
U.S.C. 111(a) and an international application designating the United 
States of America which entered the national stage after compliance 
with 35 U.S.C. 371.
    Specifically, if the later-filed application is an application 
filed under 35 U.S.C. 111(a), the specific reference required by 
Sec. 1.78(a)(2)(i) must be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior-filed application. If, 
however, the later-filed application is a nonprovisional application 
which entered the national stage from an international application 
after compliance with 35 U.S.C. 371, the specific reference required by 
Sec. 1.78(a)(2)(i) must be submitted within the later of four months 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) in the later-filed international application or sixteen 
months from the filing date of the prior-filed application. This 
reference must, in any event, be submitted during the pendency of the 
later-filed application. The provisions relating to an application 
filed under 35 U.S.C. 111(a) do not change the time period for 
submitting a specific reference in such applications. The provisions 
relating to an international application designating the United States 
of America which entered the national stage after compliance with 35 
U.S.C. 371, however, do change the time period for submitting a 
specific reference to any prior-filed application for which a benefit 
is claimed in such international applications in that the four-month 
period is measured from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) rather than the actual filing date of the 
international application under 35 U.S.C. 363.
    Section 1.78(a)(2) is also amended to eliminate the requirement 
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. The Office is eliminating this 
requirement because: (1) The Office will not delay publication of the 
application if this requirement is not met; and (2) this information 
can be obtained from other sources.
    Section 1.78(a)(2) is also amended such that the rules of practice 
expressly indicate that the time periods in Sec. 1.78(a)(2)(ii) do not 
apply if the later-filed application is: (1) An application for a 
design patent; (2) an application filed under 35 U.S.C. 111(a) before 
November 29, 2000; or (3) a nonprovisional application which entered 
the national stage after compliance with 35 U.S.C. 371 from an 
international application filed under 35 U.S.C. 363 before November 29, 
2000. The Office indicated that the changes to Sec. 1.78 to implement 
eighteen-month publication applied only to applications

[[Page 67089]]

filed on or after November 29, 2000. See Changes to Implement Eighteen-
Month Publication of Patent Applications, 65 FR at 57024, 1239 Off. 
Gaz. Pat. Office at 63. The Office, however, has received enough 
inquiries about whether the time periods set forth in Sec. 1.78 apply 
to particular applications that the Office has decided to place this 
information in Sec. 1.78 itself.
    Section 1.78(a)(2) is also amended to change the sentence ``[t]he 
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'' to ``[t]he 
identification of an application by application number under this 
section is the identification of every application assigned that 
application number necessary for a specific reference required by 35 
U.S.C. 120 to every such application assigned that application 
number.'' That is, a continued prosecution application under 
Sec. 1.53(d) (CPA) does not require any additional identification of or 
reference to the prior application (or any prior application assigned 
the application number of such application under Sec. 1.53(d)) under 35 
U.S.C. 120 and Sec. 1.78(a)(2) other than the identification of the 
prior application in the request required by Sec. 1.53(d) for a CPA. 
See Changes to Patent Practice and Procedure, 62 FR 53131, 53144 (Oct. 
10, 1997), 1203 Off. Gaz. Pat. Office 63, 73 (Oct. 21, 1997) (final 
rule). The change to this provision clarifies that the other provisions 
of Sec. 1.78(a)(2) (e.g., that the claim be in the application data 
sheet or the first sentence of the specification) remain applicable 
when an application under Sec. 1.53(b) claims the benefit under 35 
U.S.C. 120 of a continued prosecution application filed under 
Sec. 1.53(d).
    Section 1.78(a)(3) is amended to expressly indicate that a petition 
under Sec. 1.78(a)(3) to accept the delayed claim must also be 
accompanied by the claim (i.e., the reference required by 35 U.S.C. 120 
and Sec. 1.78(a)(2)) to the benefit of the prior-filed application, 
unless previously submitted. Section 1.78(a)(3) is also amended to 
change ``paragraph (a)(2)'' to paragraph ``(a)(2)(ii)'' for consistency 
with the changes to Sec. 1.78(a)(2).
    Section 1.78(a)(3) provides that if the reference required by 35 
U.S.C. 120 and Sec. 1.78(a)(2) of this section is presented in a 
nonprovisional application after the time period provided by 
Sec. 1.78(a)(2)(ii), 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 applicant files a petition to accept the delayed claim that is 
accompanied by: (1) the reference required by 35 U.S.C. 120 and 
Sec. 1.78(a)(2) to the prior-filed application (unless previously 
submitted); (2) the surcharge set forth in Sec. 1.17(t); and (3) a 
statement that the entire delay between the date the claim was due 
under Sec. 1.78(a)(2)(ii) and the date the claim was filed was 
unintentional.
    If an applicant includes a claim to the benefit of a prior-filed 
nonprovisional application or international application designating the 
United States elsewhere in the application but not in the manner 
specified in Sec. 1.78(a)(2)(i) and (iii) (e.g., if the claim is 
included in an unexecuted oath or declaration or the application 
transmittal letter) within the time period set forth in 
Sec. 1.78(a)(2)(ii), the Office will not require a petition (and the 
surcharge under Sec. 1.17(t)) to correct the claim if the information 
concerning the claim contained elsewhere in the application was 
recognized by the Office as shown by its inclusion on a filing receipt. 
This is because the application will have been scheduled for 
publication on the basis of the information concerning the claim 
contained elsewhere in the application within the time period set forth 
in Sec. 1.78(a)(2)(ii). Of course, the applicant must still submit the 
claim in the manner specified in Sec. 1.78(a)(2)(i) and (iii) (i.e., by 
an amendment in the first sentence of the specification or in an 
application data sheet) to have a proper claim under 35 U.S.C. 120 and 
Sec. 1.78 to the benefit of a prior-filed application. If, however, an 
applicant includes such a claim elsewhere in the application and not in 
the manner specified in Sec. 1.78(a)(2)(i) and (iii), and the claim is 
not recognized by the Office as shown by its absence on the filing 
receipt (e.g., if the claim is in a part of the application where 
priority or continuity claims are not conventionally located, such as 
the body of the specification), the Office will require a petition (and 
the surcharge under Sec. 1.17(t)) to correct such claim. This is 
because the application will not have been scheduled for publication on 
the basis of the information concerning the claim contained elsewhere 
in the application.
    Section 1.78(a)(4) is amended to make its provisions applicable to 
international applications designating the United States of America.
    Section 1.78(a)(5) is amended to place its provisions in separate 
paragraphs (a)(5)(i) through (a)(5)(iv) for clarity. Section 1.78(a)(5) 
is also amended to: (1) Make its provisions applicable to international 
applications designating the United States of America; (2) set forth 
the time period for making a claim (providing the specific reference 
required by Sec. 1.78(a)(5)) for both an application filed under 35 
U.S.C. 111(a) and an international application designating the United 
States of America which entered the national stage after compliance 
with 35 U.S.C. 371; and (3) change the time period and requirements for 
filing an English language translation of a non-English language 
provisional application.
    Specifically, if the later-filed application is an application 
filed under 35 U.S.C. 111(a), the specific reference required by 
Sec. 1.78(a)(5)(i) must be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior-filed application. If, 
however, the later-filed application is a nonprovisional application 
which entered the national stage from an international application 
after compliance with 35 U.S.C. 371, the specific reference required by 
Sec. 1.78(a)(5)(i) must be submitted within the later of four months 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) in the later-filed international application or sixteen 
months from the filing date of the prior-filed application. This 
reference must, in any event, be submitted during the pendency of the 
later-filed application. The provisions relating to an application 
filed under 35 U.S.C. 111(a) do not change the time period for 
submitting a specific reference in such applications. The provisions 
relating to an international application designating the United States 
of America which entered the national stage after compliance with 35 
U.S.C. 371, however, do change the time period for submitting a 
specific reference to any prior-filed application for which a benefit 
is claimed in such international applications in that the four-month 
period is measured from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) rather than the actual filing date of the 
international application under 35 U.S.C. 363.
    Section 1.78(a)(5) is also amended such that the rules of practice 
expressly indicate that the time periods in Sec. 1.78(a)(5)(ii) do not 
apply if the later-filed application is: (1) an application filed under 
35 U.S.C. 111(a) before November 29, 2000; or (2) a nonprovisional 
application which entered the national stage after compliance with 35 
U.S.C. 371 from an international application filed under 35 U.S.C. 363 
before November 29, 2000.
    Section 1.78(a)(5) is also amended to provide that if a provisional 
application was filed in a language other than

[[Page 67090]]

English and an English-language translation of the provisional 
application and a statement that the translation is accurate were not 
previously filed in the provisional application or the nonprovisional 
application, applicant will be notified and given a period of time 
within which to file an English-language translation of the non-
English-language provisional application and a statement that the 
translation is accurate. In a pending nonprovisional application, 
failure to timely reply to such a notice will result in abandonment of 
the application. Thus, Sec. 1.78(a)(5) no longer provides that if a 
provisional application was filed in a language other than English, a 
claim to the benefit of such provisional application is waived if an 
English language translation of a non-English language provisional 
application is not submitted 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-filed provisional application. In the 
event that the Office schedules an application that claims the benefit 
of a provisional application filed in a language other than English for 
publication without issuing a notice requiring the applicant to file 
English-language translation of the non-English-language provisional 
application, the applicant should file the English-language translation 
of the non-English-language provisional application and a statement 
that the translation is accurate before the scheduled publication date. 
This change to Sec. 1.78(a)(5) allows applicant to file an English-
language translation of a non-English language provisional application 
either in the provisional application or in each nonprovisional 
application that claims the benefit of the provisional application.
    Section 1.78(a)(5) is also amended to delete the term 
``copending,'' as 35 U.S.C. 119(e) no longer requires copendency 
between a nonprovisional application and a provisional application for 
the nonprovisional application to claim the benefit of the filing date 
of the provisional application under 35 U.S.C. 119(e). 35 U.S.C. 
119(e)(1) continues to require that any nonprovisional application 
claiming the benefit of a provisional application be filed within 
twelve months after the filing date of the provisional application (or 
the next succeeding business day if the date that is twelve months 
after the filing date of the provisional application falls on a 
Saturday, Sunday, or Federal holiday). See Request for Continued 
Examination Practice and Changes to Provisional Application Practice, 
65 FR 50092, 50098 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13, 18-
19 (Sept. 5, 2000) (final rule) (comment 2 and response).
    Section 1.78(a)(6) is amended to expressly indicate that a petition 
under Sec. 1.78(a)(6) to accept the delayed claim must also be 
accompanied by the claim (i.e., the reference required by 35 U.S.C. 
119(e) and Sec. 1.78(a)(5)) to the benefit of the prior-filed 
provisional application, unless previously submitted. Section 
1.78(a)(6) is also amended to change ``paragraph (a)(5)'' to paragraph 
``(a)(5)(ii)'' for consistency with the changes to Sec. 1.78(a)(5).
    Section 1.78(a)(6) provides that if the reference 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 
Sec. 1.78(a)(5)(ii), the claim under 35 U.S.C. 119(e) for the benefit 
of a prior-filed provisional application may be accepted if the 
applicant files a petition to accept the delayed claim that is 
accompanied by: (1) the reference required by 35 U.S.C. 119(e) and 
Sec. 1.78(a)(5) to the prior-filed provisional application (unless 
previously submitted); (2) the surcharge set forth in Sec. 1.17(t); and 
(3) a statement that the entire delay between the date the claim was 
due under Sec. 1.78(a)(5)(ii) and the date the claim was filed was 
unintentional.
    If an applicant includes a claim to the benefit of a prior-filed 
provisional application elsewhere in the application but not in the 
manner specified in Sec. 1.78(a)(5)(i) and (iii) (e.g., if the claim is 
included in an unexecuted oath or declaration or the application 
transmittal letter) within the time period set forth in 
Sec. 1.78(a)(5)(ii), the Office will not require a petition (and the 
surcharge under Sec. 1.17(t)) to correct the claim if the information 
concerning the claim contained elsewhere in the application was 
recognized by the Office as shown by its inclusion on a filing receipt. 
This is because the application will have been scheduled for 
publication on the basis of the information concerning the claim 
contained elsewhere in the application within the time period set forth 
in Sec. 1.78(a)(5)(ii). Of course, the applicant must still submit the 
claim in the manner specified in Sec. 1.78(a)(5)(i) and (iii) (i.e., by 
an amendment in the first sentence of the specification or in an 
application data sheet) to have a proper claim under 35 U.S.C. 119(e) 
and Sec. 1.78 to the benefit of a prior-filed provisional application. 
If, however, an applicant includes such a claim elsewhere in the 
application and not in the manner specified in Sec. 1.78(a)(5)(i) and 
(iii), and the claim is not recognized by the Office as shown by its 
absence on a filing receipt (e.g., if the claim is in a part of the 
application where priority or continuity claims are not conventionally 
located, such as the body of the specification), the Office will 
require a petition (and the surcharge under Sec. 1.17(t)) to correct 
such claim. This is because the application will not have been 
scheduled for publication on the basis of the information concerning 
the claim contained elsewhere in the application.
    Section 1.311: Section 1.311(a) is amended to correct the 
parenthetical reference to ``(Sec. 1.211(f))'' to ``(Sec. 1.211(e)).''
    Section 1.434: Section 1.434(d)(2) is amended by deleting the term 
``copending,'' as the prior national application may be a provisional 
application and 35 U.S.C. 119(e) no longer requires copendency for a 
nonprovisional application to claim the benefit of the filing date of a 
provisional application under 35 U.S.C. 119(e).
    Section 1.491: The Office proposed amending Sec. 1.491 such that 
the regulations set forth the current language of 35 U.S.C. 371(b) that 
defines when national stage commencement occurs. The Office will adopt 
that proposed change to Sec. 1.491 in a separate final rule that 
implements an amendment to PCT Article 22.

Response to Comments

    The Office published a notice proposing the above-mentioned changes 
to the rules of practice. See Requirements for Claiming the Benefit of 
Prior-Filed Applications Under Eighteen-Month Publication of Patent 
Applications, 66 FR 46409 (Sept. 5, 2001), 1251 Off. Gaz. Pat. Office 
16 (Oct. 2, 2001) (notice of proposed rulemaking). The Office received 
seven written comments (from intellectual property organizations, 
patent practitioners, and the general public) in response to the notice 
of proposed rulemaking. The comments are available for public 
inspection at the Office of the Commissioner for Patents, located in 
Crystal Park 2, Suite 910, 2121 Crystal Drive, Arlington, Virginia, and 
are also posted on the Office's Internet Web site (address: http://www.uspto.gov).
    Most of the comments expressed support for the proposed changes. 
None of the comments opposed the proposed changes, but several comments 
included additional suggestions. Those comments and the Office's 
responses follow (comments that generally support the proposed changes 
are not discussed):

[[Page 67091]]

    Comment 1: Several comments suggested that the Office make clear 
that the time period requirements in Sec. 1.78(a)(2)(ii) and 
Sec. 1.78(a)(5)(ii) (and resulting waiver if these time period 
requirements are not met) do not apply to applications filed before 
November 29, 2000. Another comment suggested that the change to 
Sec. 1.78 be made retroactive to all applications filed on or after 
November 29, 2000.
    Response: Sections 1.55 and 1.78 are now amended to expressly state 
that the time period requirements of Sec. 1.55(a)(1)(i), 
Sec. 1.78(a)(2)(ii) and Sec. 1.78(a)(5)(ii) do not apply to 
applications filed before November 29, 2000. Therefore, there is no 
waiver of a benefit under 35 U.S.C. 119 or 120 for failure to comply 
with the time period requirements of Sec. 1.55(a)(1)(i), 
Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii) in an application filed 
before November 29, 2000.
    Except where the terms of Sec. 1.55 and Sec. 1.78 indicate that a 
provision of Sec. 1.55 or Sec. 1.78 applies only to applications filed 
on or after November 29, 2000 (i.e., Sec. 1.55(a)(1)(i), 
Sec. 1.78(a)(2)(ii), and Sec. 1.78(a)(5)(2)(ii)), the provisions of 
Sec. 1.55 and Sec. 1.78 as now amended are applicable to applications 
filed before, on, or after November 29, 2000. For example, both the 
elimination of the requirement 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 
(Sec. 1.78(a)(2)), and the more liberal time period and provisions for 
filing an English language translation of a non-English language 
provisional application (Sec. 1.78(a)(5)), apply to applications filed 
before, on, or after November 29, 2000. Sections 1.55 and 1.78 as now 
amended, however, provide that the time period requirements of 
Sec. 1.55(a)(1)(i), Sec. 1.78(a)(2)(ii) and Sec. 1.78(a)(5)(ii) do not 
apply to applications filed before November 29, 2000.
    Comment 2: Several comments suggested that Sec. 1.78 be amended to 
state that, if an applicant includes a claim under Sec. 1.78 to the 
benefit of a prior-filed application elsewhere in the application, but 
not in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or 
Sec. 1.78(a)(5)(i) and (iii), within the time period set forth in 
Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii), respectively, the Office 
will not require a petition (and the surcharge under Sec. 1.17(t)) to 
correct the claim if the information concerning the claim contained 
elsewhere in the application was recognized by the Office as shown by 
its inclusion on a filing receipt or in the patent application 
publication.
    Response: The Office has adopted the following practice: if an 
applicant includes a claim under Sec. 1.78 to the benefit of a prior-
filed application elsewhere in the application, but not in the manner 
specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and 
(iii), within the time period set forth in Sec. 1.78(a)(2)(ii) or 
Sec. 1.78(a)(5)(ii), respectively, the Office will not require a 
petition (and the surcharge under Sec. 1.17(t)) to correct the claim if 
the information concerning the claim contained elsewhere in the 
application was recognized by the Office as shown by its inclusion on a 
filing receipt (not as shown by its inclusion in the patent application 
publication). The reason for this practice is to avoid the situation in 
which an applicant is required to file a petition (and pay the 
surcharge under Sec. 1.17(t)) even though the application was scheduled 
for publication on the basis of the information concerning the claim 
contained elsewhere in the application, but not in the manner specified 
in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii), within 
the time period set forth in Sec. 1.78(a)(2)(ii). That is, whether an 
applicant is required to file a petition (and pay the surcharge under 
Sec. 1.17(t)) to correct a claim that does not comply with 
Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) is based 
upon the effect the informal claim has on the scheduling of the 
application for publication, and not whether the informal claim is 
ultimately included in the patent application publication.
    The Office's goal is to encourage applicants to provide claims to 
the benefit of any prior-filed application in the manner specified in 
Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) within the 
time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii). 
Amending Sec. 1.78 itself to expressly include the above-stated 
practice would give tacit approval to providing claim to the benefit of 
a prior-filed application in a manner that does not comply with 
Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii). The 
commentors' proposed amendment to Sec. 1.78 would have an effect 
contrary to the Office's goal of encouraging applicants to provide 
claims to the benefit of any prior-filed application in the manner 
specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and 
(iii) within the time period set forth in Sec. 1.78(a)(2)(ii) or 
Sec. 1.78(a)(5)(ii).
    Finally, if a claim under Sec. 1.78 does not comply with 
Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) (but is 
stated elsewhere in the application), such claim must eventually be 
presented in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or 
Sec. 1.78(a)(5)(i) and (iii) (i.e., by an amendment in the first 
sentence of the specification or in an application data sheet) to be a 
proper claim under 35 U.S.C. 119(e) or 120 and Sec. 1.78 to the benefit 
of a prior-filed application.
    Comment 3: Several comments suggested that the Office should make 
it clear that if the requirements of Sec. 1.78(a)(2)(ii) have been met, 
the applicant has not waived priority or continuity benefits even if 
the priority or continuity claim is not included in the patent 
application publication.
    Response: If a claim under Sec. 1.78 to the benefit of a prior-
filed application is stated in the manner specified in 
Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) within the 
time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii), 
the applicant has not waived the claim regardless of whether the Office 
includes the claim in the patent application publication. Nothing in 
Sec. 1.78 suggests that the propriety of claim under Sec. 1.78 is 
dependent upon its inclusion in the patent application publication.
    Comment 4: Several comments suggested that the Office should 
provide applicants with the greatest possible flexibility in satisfying 
priority claim requirements, and should avoid adding technical 
requirements that may result in a loss of patent rights. The comments 
specifically suggested that since Office employees are familiar with 
checking the declaration for priority claims, Sec. 1.78(a)(2)(iii) 
should be further amended to allow the reference required by 
Sec. 1.78(a)(2)(i) to be included in the declaration.
    Response: The Office allows applicants to provide claims under 
Sec. 1.78 to the benefit of any prior-filed application either in the 
first line of the specification (where Sec. 1.78 formerly required such 
a claim to be) or in an application data sheet (Sec. 1.76). Providing 
even this level of flexibility hinders the patent application 
publication and patent printing process when the specification and 
application data sheet (Sec. 1.76) contain conflicting information. 
Providing the oath or declaration under Sec. 1.63 as an additional 
possible location for claims under Sec. 1.78 to the benefit of any 
prior-filed application would result in confusion in situations in 
which: (1) the applicant has submitted multiple oaths or declarations 
under Sec. 1.63; or (2) information submitted in the oath or 
declaration conflicts with information submitted in the specification 
or the application data sheet (Sec. 1.76). Providing the oath or 
declaration under Sec. 1.63 as an additional possible location for 
claims to the benefit of any prior-

[[Page 67092]]

filed application would also cause problems in the situation in which 
it is desirable to delete a claim to the benefit of a prior-filed 
application (for patent term purposes), in that a substitute oath or 
declaration not containing the claim would be necessary to eliminate a 
claim if such claim is made by a statement in the oath or declaration 
(Sec. 1.63).
    Comment 5: Several comments suggested that the Office should take 
all steps necessary to ensure that all proper priority or benefit 
claims are included in the first paragraph of the patent application 
publication.
    Response: The applicant and application information (i.e., inventor 
names, including order, title, priority/benefit, assignee name) that is 
in the Office's Patent Application Locating and Monitoring (PALM) 
system at the time the application content is extracted from the 
Office's Patent Application Capture and Review (PACR) database for 
publication will be reflected on the front page of the patent 
application publication. Thus, if an application is filed without any 
priority or benefit claim, but a priority or benefit claim is 
subsequently submitted before the application content has been 
extracted for publication, the priority or benefit claim will be 
reflected on the front page of the patent application publication. The 
application content is currently extracted for publication 
approximately nine weeks before the projected publication date. The 
time period in Sec. 1.55(a)(1), Sec. 1.78(a)(2)(ii), and 
Sec. 1.78(a)(5)(ii) for submitting a priority or continuity claim is 
four months from the actual filing date of the application or sixteen 
months from the filing date of the prior-filed application, which does 
not appear to expire until after the time at which application content 
is extracted for publication. As a practical matter, however, this time 
period will expire before the time at which application content is 
extracted for publication (and, as such, any timely priority or 
continuity claim should be entered into the Office's PALM system before 
the time at which application content is extracted for publication) 
because the failure to state a priority or continuity claim before a 
publication date is originally calculated will result in projected 
publication date that is later than the projected publication date 
would have been if such priority or continuity claim were taken into 
account.
    If an untimely claim under Sec. 1.78 to the benefit of a prior-
filed application is accepted under Sec. 1.78(a)(3) or Sec. 1.78(a)(6) 
after the application content has been extracted for publication 
purposes, the Office plans to correct its electronic records relating 
to the patent application publication such that the claim under 
Sec. 1.78 will be reflected on the Office's electronic records of the 
patent application publication (the eighteen-month publication process 
does not involve the creation of paper-based records).
    Finally, while priority and continuity claims will be reflected on 
the front page of the patent application publication, continuity claims 
under Sec. 1.78 will not additionally be stated on the first line of 
the specification unless the claim is included in the first line of the 
specification as originally filed or as filed in a copy of the 
application submitted by the Office electronic filing system under 
Sec. 1.215(c). Specifically, claims under Sec. 1.78 will not 
additionally be stated on the first line of the specification if the 
claim is included in a preliminary amendment to the specification (see 
Sec. 1.215(c) (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 
Sec. 1.215(c))) or in an application data sheet (cf. Changes to 
Implement the Patent Business Goals, 65 FR 78958, 78959 (Dec. 18, 
2000), 1242 Off. Gaz. Pat. Office 65 (Jan. 9, 2001) (final rule and 
correction) (``If continuity data is included in an application data 
sheet, but not in the first sentence of the specification, the 
continuity data to be set forth in the application data sheet will not 
be printed in the first line of the specification in the patent'')).
    Comment 6: One comment questioned whether there is any mechanism 
for correcting the absence of a priority claim in an international 
application if an applicant files the international application 
designating the United States of America, but subsequently files a 
continuation application that claims the benefit of the international 
application and the international application never enters the national 
stage under 35 U.S.C. 371.
    Response: The requirement that a claim to the benefit of a prior-
filed provisional application, a prior-filed nonprovisional 
application, or a prior-filed international application designating the 
United States be submitted within the later of four months from the 
date on which the national stage commenced under 35 U.S.C. 371(b) or 
(f) in the later-filed international application or sixteen months from 
the filing date of the prior-filed application does not apply to an 
international application that never entered the national stage under 
35 U.S.C. 371. Therefore, to amend the later-filed international 
application to add a claim to the benefit of a prior-filed provisional 
application, a prior-filed nonprovisional application, or a prior-filed 
international application designating the United States, the applicant 
need only file a petition under Sec. 1.182 to amend an abandoned 
application (the later-filed international application) with the claim 
to the benefit of a prior-filed application (regardless of whether the 
later-filed international application was filed in the United States 
Receiving Office).
    Comment 7: Several comments supported the proposed change by which 
the Office would issue a notice in a nonprovisional application 
claiming the benefit of a non-English language provisional application 
that sets a time period within which the English translation must be 
filed, but noted that if the Office fails to issue such a notice and 
the applicant does not provide such a translation before publication, 
the burden will fall on applicants against whom the resulting patent 
application publication is cited as a reference to obtain a translation 
of the provisional application.
    Response: The Office plans to check during the preexamination 
processing of a nonprovisional application to determine whether the 
nonprovisional application claims the benefit of a provisional 
application that was filed in a language other than English and, if so, 
whether an English-language translation of the provisional application 
was filed in the provisional application. If the nonprovisional 
application claims the benefit of a provisional application that was 
filed in a language other than English and no English-language 
translation of the provisional application was filed in the provisional 
application, the Office will issue a notice requiring the applicant to 
timely file an English-language translation and a statement that the 
translation is accurate. If the Office schedules an application that 
claims the benefit of a provisional application filed in a language 
other than English for publication without issuing a notice requiring 
the applicant to file an English-language translation of the non-
English-language provisional application, the applicant should file the 
English-language translation of the non-English-language provisional 
application and a statement that the translation is accurate before the 
scheduled publication date.
    The situation in which a patent application publication results 
from a nonprovisional application that claims the benefit of a 
provisional application that was filed in a language other than

[[Page 67093]]

English, and no English-language translation of the provisional 
application was filed in either the provisional application or the 
nonprovisional application, will not occur unless: (1) The Office fails 
to issue a notice during the preexamination processing of the 
nonprovisional application requiring the applicant to timely file an 
English-language translation of the provisional application; and (2) 
the applicant fails to provide the English-language translation of the 
non-English-language provisional application before the publication 
date of the patent application publication. Once this situation comes 
to the Office's attention, Sec. 1.78(a)(5)(iv) as now amended provides 
that the Office may issue a notice requiring the applicant (in the 
nonprovisional application that resulted in the patent application 
publication) to provide an English-language translation of the non-
English-language provisional application and a statement that the 
translation is accurate (the Office may also simply obtain its own 
English-language translation of the non-English-language provisional 
application if that appears to be the most convenient course of 
action). Failure to timely provide an English-language translation of 
the non-English-language provisional application and a statement that 
the translation is accurate in reply to such a notice will result in 
abandonment in a pending nonprovisional application, and may jeopardize 
the claim to the benefit of the provisional application in any 
situation (since the requirements of Sec. 1.78(a)(5) have not been 
complied with).
    Comment 8: One comment questioned whether a nonprovisional 
application which entered the national stage from an international 
application after compliance with 35 U.S.C. 371 must include a 
reference under Sec. 1.78 to the underlying international application.
    Response: A reference under Sec. 1.78 to the underlying 
international application is neither necessary nor appropriate in a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371. See 
Manual of Patent Examining Procedure Sec. 1893.03(c) (8th ed. 2001) (a 
national stage application filed under 35 U.S.C. 371 may not claim 
benefit of the filing date of the international application of which it 
is the national stage since its filing date is the date of filing of 
that international application).
    Comment 9: One comment suggested that the surcharge for the 
unintentionally delayed submission of a priority claim was excessive.
    Response: As indicated in the final rule to implement eighteen-
month publication, this 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. As such, the surcharge amount tracks the fee amount for a 
petition to revive an unintentionally abandoned application (35 U.S.C. 
41(a)(7)). See Changes to Implement Eighteen-Month Publication of 
Patent Applications, 65 FR at 57040, 1239 Off. Gaz. Pat. Office at 77 
(comment 8 and response).
    Comment 10: One comment noted that a nonprovisional application 
which entered the national stage from an international application 
after compliance with 35 U.S.C. 371 has already been published as an 
international application.
    Response: As indicated in the final rule to implement eighteen-
month publication, the International Bureau 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. See 
Changes to Implement Eighteen-Month Publication of Patent Applications, 
65 FR at 57045, 1239 Off. Gaz. Pat. Office at 82 (comment 47 and 
response).

Classification

Administrative Procedure Act

    The changes in this final rule concern only the procedures for 
filing claims for the benefit of a prior-filed application under 35 
U.S.C. 119(e) or 120, the procedures for filing an English language 
translation of a non-English language provisional application, and 
technical corrections to the provisions of Secs. 1.78, 1.311, and 
1.434. Because all of the changes relate to Office practices and 
procedures, prior notice and an opportunity for public comment was not 
required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty-
day advance publication is not required pursuant to 5 U.S.C. 553(d) (or 
any other law). However, because the Office desired the benefit of 
public comment on this topic, the Office voluntarily accepted comments 
pursuant to a published notice proposing the above-mentioned changes.

Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), the analytical 
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) 
are inapplicable. As such, the regulatory flexibility analysis is not 
required, and none has been provided. See 5 U.S.C. 603.

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 the following control 
numbers: 0651-0021, 0651-0031, 0651-0032, and 0651-0033.
    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: Regular submission (approved through December of 
2003).
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Federal Agencies or Employees, Not-for-Profit 
Institutions, Small Businesses or Organizations.
    Estimated Number of Respondents: 331,288.
    Estimated Time Per Response: Between 15 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 401,083.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify 
the

[[Page 67094]]

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: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/30-32/35-37/42/43/61/62/63/64/67/68/
91/92/ 96/97/PTO-2053/PTO-2055.
    Type of Review: Regular submission (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: 2,247,389.
    Estimated Time Per Response: 0.45 hours.
    Estimated Total Annual Burden Hours: 1,021,941 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 United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
Disclosure Statements; Terminal Disclaimers; Petitions to Revive; 
Express Abandonments; Appeal Notices; Petitions for Access; Powers to 
Inspect; Certificates of Mailing or Transmission; Statements under 
Sec. 3.73(b); Amendments; Petitions and their Transmittal Letters; and 
Deposit Account Order Forms.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
    Type of Review: Regular submission (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: 319,350.
    Estimated Time Per Response: 9.35 hours.
    Estimated Total Annual Burden Hours: 2,984,360 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 the 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: Regular submission (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. Notwithstanding any 
other provision of law, no person is required to respond to nor shall a 
person be subject to a penalty for failure to comply with a collection 
of information subject to the requirements of the Paperwork Reduction 
Act unless that collection of information displays a currently valid 
OMB control number.

List of Subjects in 37 CFR Part 1

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


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

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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


    2. Section 1.14 is amended by revising paragraph (i)(2) to read as 
follows:


Sec. 1.14  Patent applications preserved in confidence.

* * * * *
    (i) * * *
    (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(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. Section 1.55 is amended by revising paragraphs (a)(1)(i) and (c) 
to read as follows:


Sec. 1.55  Claim for foreign priority.

    (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 periods in this paragraph do not apply in an application under 
35 U.S.C. 111(a) if the application is:
    (A) A design application; or
    (B) An application filed before November 29, 2000.
* * * * *
    (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 claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section 
to the prior

[[Page 67095]]

foreign application, unless previously submitted;
    (2) The surcharge set forth in Sec. 1.17(t); and
    (3) 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.
    4. Section 1.78 is amended by revising paragraph (a) to read as 
follows:


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

    (a)(1) A nonprovisional application or international application 
designating the United States of America may claim an invention 
disclosed in one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America. In order for an application to claim the benefit of 
a prior-filed copending nonprovisional application or international 
application designating the United States of America, each prior-filed 
application must name as an inventor at least one inventor named in the 
later-filed application and disclose the named inventor's invention 
claimed in at least one claim of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 112. In addition, 
each prior-filed application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Complete as set forth in Sec. 1.51(b); or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b) or 
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; 
or
    (iv) Entitled to a filing date as set forth in Sec. 1.53(b) and 
have paid therein the processing and retention fee set forth in 
Sec. 1.21(l) within the time period set forth in Sec. 1.53(f).
    (2)(i) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application or international 
application designating the United States of America claiming the 
benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America must contain or be amended to contain a reference to 
each such prior-filed 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. Cross references to other related 
applications may be made when appropriate (see Sec. 1.14).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted within the later of four months from the actual filing date 
of the later-filed application or sixteen months from the filing date 
of the prior-filed application. If the later-filed application is a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, this 
reference must also be submitted within the later of four months from 
the date on which the national stage commenced under 35 U.S.C. 371(b) 
or (f) in the later-filed international application or sixteen months 
from the filing date of the prior-filed application. These time periods 
are not extendable. 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 paragraph (a)(2)(i) of this section is considered a 
waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such 
prior-filed application. The time periods in this paragraph do not 
apply if the later-filed application is:
    (A) An application for a design patent;
    (B) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (C) A nonprovisional application which entered the national stage 
after compliance with 35 U.S.C. 371 from an international application 
filed under 35 U.S.C. 363 before November 29, 2000.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec. 1.76), or the specification must 
contain or be amended to contain such reference in the first sentence 
following the title.
    (iv) 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-filed application. The identification of an application by 
application number under this section is the identification of every 
application assigned that application number necessary for a specific 
reference required by 35 U.S.C. 120 to every such application assigned 
that application number.
    (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)(ii) 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-filed 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 reference required by 35 U.S.C. 120 and paragraph (a)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (ii) The surcharge set forth in Sec. 1.17(t); and
    (iii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2)(ii) 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, 
or an international application designating the United States of 
America may claim an invention disclosed in one or more prior-filed 
provisional applications. In order for an application to claim the 
benefit of one or more prior-filed provisional applications, each 
prior-filed provisional application must name as an inventor at least 
one inventor named in the later-filed application and disclose the 
named inventor's invention claimed in at least one claim of the later-
filed application in the manner provided by the first paragraph of 35 
U.S.C. 112. In addition, each prior-filed 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)(i) Any nonprovisional application or international application 
designating the United States of America claiming the benefit of one or 
more prior-filed provisional applications must contain or be amended to 
contain a reference to each such prior-filed provisional application, 
identifying it by the provisional application number (consisting of 
series code and serial number).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted within the later of four

[[Page 67096]]

months from the actual filing date of the later-filed application or 
sixteen months from the filing date of the prior-filed provisional 
application. If the later-filed application is a nonprovisional 
application which entered the national stage from an international 
application after compliance with 35 U.S.C. 371, this reference must 
also be submitted within the later of four months from the date on 
which the national stage commenced under 35 U.S.C. 371(b) or (f) in the 
later-filed international application or sixteen months from the filing 
date of the prior-filed provisional application. These time periods are 
not extendable. Except as provided in paragraph (a)(6) of this section, 
the failure to timely submit the reference is considered a waiver of 
any benefit under 35 U.S.C. 119(e) to such prior-filed provisional 
application. The time periods in this paragraph do not apply if the 
later-filed application is:
    (A) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (B) A nonprovisional application which entered the national stage 
after compliance with 35 U.S.C. 371 from an international application 
filed under 35 U.S.C. 363 before November 29, 2000.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec. 1.76), or the specification must 
contain or be amended to contain such reference in the first sentence 
following the title.
    (iv) If the prior-filed provisional application was filed in a 
language other than English and an English-language translation of the 
prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application or the later-filed nonprovisional application, 
applicant will be notified and given a period of time within which to 
file an English-language translation of the non-English-language prior-
filed provisional application and a statement that the translation is 
accurate. In a pending nonprovisional application, failure to timely 
reply to such a notice will result in abandonment of the application.
    (6) If the reference 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)(ii) 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 
later-filed application if the reference identifying the prior-filed 
application by provisional application number was 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 reference required by 35 U.S.C. 119(e) and paragraph (a)(5) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (ii) The surcharge set forth in Sec. 1.17(t); and
    (iii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5)(ii) 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.
* * * * *

    5. Section 1.311 is amended by revising paragraph (a) 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(e)) 
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.
* * * * *

    6. Section 1.434 is amended by revising paragraph (d)(2) to read as 
follows:


Sec. 1.434  The request.

* * * * *
    (d) * * *
    (2) A reference to any prior-filed national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior-filed application is to be 
claimed.

    Dated: December 19, 2001.
James. E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 01-31872 Filed 12-27-01; 8:45 am]
BILLING CODE 3510-16-P