[Federal Register Volume 68, Number 57 (Tuesday, March 25, 2003)]
[Proposed Rules]
[Pages 14365-14379]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-6972]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2003-P-007]
RIN 0651-AB59


Changes To Implement Electronic Maintenance of Official Patent 
Application Records

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) has 
established a 21st Century Strategic Plan to transform the Office into 
a quality-focused, highly productive, responsive organization 
supporting a market-driven intellectual property system. One priority 
of the 21st Century Strategic Plan is the beginning-to-end electronic 
processing of patent applications. The Office is proposing changes to 
the rules of practice in this notice to adapt to a patent electronic 
image management system. Specifically, the changes proposed in this 
notice facilitate electronic data capture and processing, streamline 
the patent application process, and simplify and clarify the pertinent 
provisions of the rules of practice.

DATES: To be ensured of consideration, written comments must be 
received on or before April 24, 2003. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also 
be submitted by mail addressed to: Box Comments--Patents, Commissioner 
for Patents, Washington, DC 20231; or by facsimile

[[Page 14366]]

to (703) 872-9411, marked to the attention of Robert Clarke. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office would prefer that the comments be submitted on a DOS 
formatted 3 \1/2\ inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, located at Room 3D65 of Crystal Plaza \3/4\, 
2201 South Clark Place, Arlington, Virginia, and will be available 
through anonymous file transfer protocol (ftp) via the Internet 
(address: http://www.uspto.gov). Since comments will be made available 
for public inspection, information that is not desired to be made 
public, such as an address or phone number, should not be included in 
the comments.

FOR FURTHER INFORMATION CONTACT: Robert A. Clarke ((703) 305-9177), 
Senior Legal Advisor, or Robert J. Spar ((703) 308-5107), Director, 
Office of Patent Legal Administration (OPLA), directly by phone, or by 
facsimile to (703) 305-1013, marked to the attention of Mr. Clarke, or 
by mail addressed to: Box Comments--Patents, Commissioner for Patents, 
Washington, DC 20231.

SUPPLEMENTARY INFORMATION: The Office is increasing the integrity of 
its internal patent application record maintenance by adopting a new 
electronic data processing system for the storage and maintenance of 
all the records associated with patent applications. Because the system 
is consistent with the data processing system used by the European 
Patent Office (EPO), it will also improve information exchange among 
the Intellectual Property Offices.
    The system will use image technology to replace the standard paper 
processing of patent applications currently used in the Office. The 
paper document application file contents (including the specification, 
oath or declaration, drawings, information disclosure statements, 
amendments, Office actions, and file jacket notations) of pending 
applications will be scanned into electronic image files. All 
processing and examination will be performed with the electronic image 
files, instead of the paper source documents, by all Office personnel.
    The system will affect applicants minimally during the patent 
application process, because the program affects internal operations 
and not external communications. Applicants will continue to send and 
receive Office correspondence in paper form, although the Office 
encourages use of the existing alternative electronic filing system 
resources for application filings and certain information disclosure 
statement submissions. The proposed changes to the rules of practice in 
title 37 of the Code of Federal Regulations (CFR) are designed to 
improve internal operations' use of the electronic format, primarily by 
easing the requirements upon applicants in amendment practice and 
information disclosure statement submissions. The electronic nature of 
patent records permits their viewing by the public through the Patent 
Application Information Retrieval (PAIR) system, which has a number of 
advantages: it provides notice to applicants of certain examination 
processing activities (e.g., mailing of Office actions); it assures 
confidence in the integrity of the Office records; it reduces the 
handling of the records; and it allows parallel processing of the 
application by various parts of the Office.
    The technology and procedures for the new system are similar to 
those used at the EPO, but adapted to the Office's legal requirements 
and existing computer systems. The Office has incorporated the 
experience and lessons learned from the previously announced prototype 
program (USPTO Announces Prototype of Image Processing, 1265 Off. Gaz. 
Pat. Office 87 (December 17,2002)) into a production system for all 
patent applications.
    The electronic format of applications will reduce delays in moving 
information within the Office and between the Office, the applicant, 
other Intellectual Property (IP) Offices and other parties having 
authority to view the records. It will also reduce the potential for 
loss of records and misfiling, provide the capacity for multiple 
parties to access the records simultaneously, improve the efficiency of 
the publication process, and set the Office up for subsequent 
improvements in electronic communication related to applications 
between the Office, the applicant, and other parties.
    It is also anticipated that the system will facilitate the sharing 
of information between the Office and other IP Offices. The Office 
anticipates that agreements to electronically transmit priority 
documents to certain other IP Offices as well as search results and 
other application information will be negotiated shortly. Transmission 
of priority documents electronically directly to the other IP Offices 
on request of the applicant is anticipated to reduce the overall costs 
to the applicant and to the other IP Offices (which would receive the 
certified copy in a format that is easily stored and retrieved on 
demand). In tandem with this effort is a parallel effort to promote the 
sharing of information (e.g., search results) concerning related 
applications by the various IP Offices in order to reduce duplication 
of efforts, improve the efficiency and quality of examination efforts, 
and decrease workload. Thus, it is anticipated that the Office's 
migration to an electronic environment together with international 
negotiations will improve the efficiency and work quality of the 
Office.

Discussion of Specific Rules

    Section 1.3: Section 1.3 is proposed to be amended to provide that 
papers presented in violation of the decorum and courtesy requirement 
will not be entered. The Office is capturing electronic images of all 
documents (papers) that will be the official records of certain 
applications. If the Office has captured the image as an electronic 
sheet(s), the Office would electronically remove the document from the 
Official file (the collection of documents related to a patent 
application or patent and which would be in this instance an electronic 
file) and from the Office computer systems. If the Office has not 
captured the image, the paper would not be entered in the Official file 
(which would in this instance be a paper file). In either event, the 
Office would provide notice in the Official file that the paper will 
not be available to the public. If the paper is intended as a reply to 
an Office action, the reply will not be considered a bona fide reply 
under Sec.  1.135(c) and the period set in the prior Office action will 
continue to run. Similarly, a paper submitted in violation of Sec.  
10.10(b) that is intended as a reply will not be entered in the 
Official file and will not be treated as an unsigned reply (nor as a 
signed reply). Therefore, the reply will not toll the time period set 
in a prior Office action.
    Section 1.9: Section 1.9 is proposed to be amended to clarify that 
the word ``paper'' and ``papers'' refer to a document or documents, 
which may be electronic records or physical paper sheet(s).
    Section 1.14: Section 1.14 explains that applications for patents 
are generally preserved in confidence, and sets forth the special 
circumstances (35 U.S.C. 122(a)) under which a member of the public may 
have information about, copies of, or access to a patent application. 
Section 1.14 is proposed to be revised to clarify the rule and to 
expand the rule to provide for electronic files and electronic exchange 
of documents.

[[Page 14367]]

    Paragraph (a)(1) has been rewritten to list the records that are 
available. The term ``file wrapper and contents'' has been replaced 
with the term ``file contents'' to avoid confusion with the paper (non-
electronic) file jacket and its contents. Paragraph (a)(1) rephrases 
the provisions of current Sec. Sec.  1.14(c) and (e) to assist the 
public in understanding what applications are available to the public. 
Accordingly, paragraph (a)(1), as rewritten, is divided into paragraphs 
(a)(1)(i) through (a)(1)(vi) listing different types of application 
files and explaining whether any part of the file content is available 
to the public. For example, paragraph (a)(1)(iii) explains that 
published pending applications are available to the public, upon 
written request, and payment of the appropriate fee, and that the 
original paper file of the pending application that was published as a 
patent application publication is not available to the public. In 
addition, it is proposed in the new paragraphs (a)(1)(iv) and (a)(1)(v) 
that where the benefit of an application is relied upon pursuant to 35 
U.S.C. 119(e), 120, 121 or 365 in certain applications, the application 
will be available in the same manner that the application would have 
been had the application been referenced in a U.S. patent or U.S. 
patent application publication. As a result of this proposed rule 
change if an application is filed as a continuation of an earlier 
application, and the USPTO publishes the continuation as a patent 
application publication without a reference to the earlier application, 
the earlier-filed application will still be available to the public 
(either the originally filed application or the entire application 
file, depending upon whether the earlier-filed application is 
abandoned).
    Paragraph (a)(2) is proposed to be revised to combine and restate 
current Sec. Sec.  1.14(a)(1) and (b). The application number of any 
application that claims the benefit of the filing date of a patent or 
an application that has been published may be obtained from the Patent 
Application Information Retrieval (PAIR) system on the Office's web 
site at: http://pair.uspto.gov.
    Section 1.14 is also proposed to be amended to have a new paragraph 
(b), to explain that electronic access may be provided to all or part 
of certain applications. Following migration to an electronic image 
file as the Official file of patent applications, access will be 
provided solely to the electronic Official file and not to the original 
paper document sheets used to create electronic images within the 
Official file.
    Proposed Sec.  1.14(c) is the same as current Sec.  1.14(d). 
Paragraph (d) of current Sec.  1.14 is proposed to be redesignated as 
Sec.  1.14(c).
    Proposed Sec.  1.14(d) is the same as current Sec.  1.14(f). 
Paragraph (f) of current Sec.  1.14 is proposed to be redesignated as 
Sec.  1.14(d).
    Section 1.14 is also proposed to be amended to have a new paragraph 
(e), to provide that the Office may share its electronic application 
files that have not been published or otherwise made available to the 
public with another Intellectual Property (IP) Office pursuant to an 
agreement between the Office and another IP Office and if the applicant 
expressly consents. The written consent must be filed in the Office for 
the Office to transmit, or allow access by the other IP Office, to the 
application or other records associated with the application. The 
migration to an electronic environment will allow the Office to 
participate with other IP Offices in more rapid exchange of 
information, such as priority documents, between IP Offices. It should 
be noted that following publication, or where the application is 
otherwise available to the public, the written consent of applicant is 
not required before access to the application file is provided.
    Paragraph (f) of Sec.  1.14 corresponds to paragraph (g) of current 
Sec.  1.14, which is proposed to be amended to move the text from (g) 
and of paragraph (g)(1) to paragraph (2), and to provide in the new 
paragraph (1) that any action of the Board of Patent Appeals and 
Interferences (BPAI), or any decision on petition, may be published or 
made available for public inspection without applicant's or patent 
owner's permission if rendered in a file open to the public pursuant to 
Sec.  1.11 or available pursuant to Sec.  1.14(e)(2), an application 
that has been published in accordance with Sec. Sec.  1.211 through 
1.221, or in an application claiming priority to, or the benefit of, an 
earlier filing date under 35 U.S.C. 119(a)-(d), 120, 121 or 365 of an 
application that has been published or patented. In paragraph (2), the 
rule would provide that an action of the BPAI, or any decision on 
petition, not publishable under paragraph (1) of this section, may be 
published or made available for public inspection if the Director 
believes the action or decision involves an interpretation of patent 
laws or regulations that would be of important precedential value; and 
the applicant, or any party involved in the interference, does not 
within two months after being notified of the intention to make the 
action or decision public, object in writing on the ground that the 
decision discloses a trade secret or other confidential information and 
states that such information is not otherwise publicly available. If an 
action or decision discloses such information, the applicant or party 
shall identify the deletions in the text of the action or decision 
considered necessary to protect the information. If the applicant or 
the party considers that the entire action or decision must be withheld 
from the public to protect such information, the applicant or party 
must explain why. Applicants or parties will be given time, not less 
than twenty days, to request reconsideration and seek court review 
before any portions of actions or decisions are made public over their 
objection. This procedure is the same as that of current paragraph 
(g)(2), but has been reworded for clarity and also to use the 
terminology ``any action'' of the BPAI or ``decision on petition'' 
would be publishable, whereas the current rule uses the terminology 
``decision by the Director or the BPAI''.
    Generally, patent applications are maintained in confidence unless 
the Director finds ``special circumstances'' due to which information 
about an application or the application itself may be released. See 35 
U.S.C. 122(a). Section 1.14 sets forth when some such ``special 
circumstances'' have been found, and specifies when release of 
information about an application or access to all or part of an 
application may be provided without a petition. Accordingly, as one 
example of a ``special circumstance,'' as proposed to be amended with 
new paragraph (f)(1), a BPAI decision would be published, even if the 
decision does not involve an interpretation of patent laws or 
regulations that would be precedential so long as the application 
claims priority to or the benefit of an earlier application that has 
been published or patented (e.g., a Japanese patent application). The 
BPAI decision would be published even if the application in which the 
decision was made requests nonpublication of the application, and the 
application is not itself patented.
    Proposed Sec.  1.14(g) is the same as current Sec.  1.14(h), which 
is proposed to be redesignated as Sec.  1.14(g).
    Proposed paragraph (h) of Sec.  1.14 corresponds to current Sec.  
1.14(i), and is further proposed to be amended to explain the meaning 
of the terms ``Home Copy,'' ``Search Copy,'' and ``Examination Copy,'' 
and by inserting ``of the publication'' after ``English language 
translation'' in paragraph (b)(2). Section 13204 of Public Law 107-273 
made a technical change to the provisional rights provisions of the

[[Page 14368]]

patent statute as to international applications to clarify that a 
translation of the international publication, as opposed to the 
international application, is required to be filed in order for a 
patent owner to obtain provisional rights pursuant to 35 U.S.C. 154(d). 
In view of this change to the statute, the corresponding reference to 
the translation in Sec.  1.14 is proposed to be changed to add ``a 
publication of an international patent application'' after ``English 
language translation of.'' In addition, it is proposed that the 
parenthetical phrase at the end of paragraph (h)(1), referencing the 
fee for a copy of an international application file, or a copy of a 
document in a file, be changed from a reference to Sec.  1.19(b) rather 
than Sec.  1.19(b)(2) or Sec.  1.19(b)(3), the fees for the contents of 
a file or a CD, and the parenthetical phrase at the end of paragraph 
(h)(2), referencing the fee for a copy of an English language 
translation in a file, be corrected to refer to Sec.  1.19(b)(4), the 
fee for a document, rather than Sec.  1.19(b)(2) or Sec.  1.19(b)(3).
    Proposed Sec.  1.14(i) is the same as current Sec.  1.14(j), which 
is proposed to be redesignated as Sec.  1.14(i)
    As proposed to be amended, Sec.  1.14 will apply to all patent 
applications filed before, on, or after the date that the amendment to 
Sec.  1.14 becomes final.
    Section 1.17: Section 1.17 is proposed to be amended to eliminate 
the reference to returning information in paragraph (h) because 
expunged information will not be returned under Sec.  1.59 as proposed 
to be amended.
    Section 1.19: Section 1.19 is proposed to be amended by revising 
paragraph (b)(1) to eliminate the fee for providing an electronic copy 
of an application as filed to another IP Office if applicant consents 
in writing by filing an authorization under 35 U.S.C. 122(a) to permit 
the Office to exchange information related to the entire file record of 
the application with the other IP Office. The electronic transmission 
would serve as the certified copies of applications as filed that can 
be required by the other IP Offices under Article 4(D)(3) of the Paris 
Convention.
    Section 1.52: Section 1.52 is proposed to be amended to clarify the 
requirement for proper paper sizes in paper communications submitted to 
the Office and to set forth the analogous requirements for electronic 
communications.
    The Office plans to capture electronic images of all documents that 
form the record of patent examination. These images will form the 
Official file of the application. Applicants will have the option of 
submitting application documents and other communications to the Office 
on paper, by facsimile transmission, or via the Office's electronic 
filing system (EFS). The existing requirements for paper and facsimile 
submissions (as well as the prohibition against filing patent 
applications by facsimile, see Sec.  1.6(d)(3)) are retained, and the 
requirements for electronic submissions are added. One newly added 
requirement for paper submissions requires that the papers not be 
permanently bound because the papers must be readily separable for 
scanned entry into the image system. The use of binder clips or 
standard office staples will generally be acceptable. The detailed 
requirements for electronic submissions are provided in the Office's 
EFS documentation (available electronically at www.uspto.gov) and the 
proposed amendments direct the affected party's attention to those 
requirements.
    Paragraph (a)(1) of Sec.  1.52 is proposed to be amended to clarify 
that it pertains to paper and facsimile submissions, and that such 
submissions not be permanently bound together.
    Paragraph (a)(2) of Sec.  1.52 is proposed to be amended to clarify 
that it pertains to paper and facsimile submissions.
    Paragraph (a)(3) of Sec.  1.52 is proposed to be amended to clarify 
that it pertains to paper and facsimile submissions.
    Paragraph (a)(5) of Sec.  1.52 is proposed to be amended to clarify 
that it pertains to paper and facsimile submissions.
    Paragraph (a) of Sec.  1.52 is also proposed to be amended by 
adding paragraphs (a)(6) and (a)(7) to set forth that papers submitted 
electronically must comply with the Office's EFS requirements and that 
failure to comply will result in a requirement for correction.
    Paragraphs (b)(3) and (b)(4) of Sec.  1.52 are proposed to be 
amended to clarify that the requirements for the abstract and claims to 
begin on a separate sheet on physical paper are similarly required to 
begin on a separate electronic page in an electronic submission.
    Paragraph (b)(7) of Sec.  1.52 is proposed to be amended to explain 
the consequences of a failure to provide compliant papers within the 
set time period. That is, as proposed to be amended, the rule will 
provide that compliant papers must be provided within the set time 
period in order to avoid abandonment of the application in the case of 
an applicant for patent, termination of proceedings in the case of a 
patent owner in a reexamination proceeding, or refusal of consideration 
of the papers in the case of a third party requester in a reexamination 
proceeding.
    Section 1.59: Section 1.59 is proposed to be amended to eliminate 
references to returning documents that have been expunged to recognize 
that, with electronic Official files, there will be nothing to return 
when a paper is expunged. The Office is capturing electronic images of 
all documents that form the Official file. Where the image is generated 
from a physical source document, the originating document may be 
disposed of once the electronic image accuracy is verified. Therefore, 
if a document is to be expunged from the record, the only operation 
that will be required will be removal of the image from the Official 
file. Paragraph (a)(1) of Sec.  1.59 is proposed to be amended by 
deleting the phrase ``and returned'' from the first sentence, and 
deleting the second sentence. Paragraph (b) of Sec.  1.59 is proposed 
to be amended by deleting the phrase ``and return'' from each of the 
first and second sentences.
    Section 1.71: Section 1.71 is proposed to be amended by adding a 
new paragraph (f) to require that the first page of a specification 
commence on a new sheet and to require that no sheet including part of 
the text of the specification include any other material. Claims must 
also commence on a new sheet and in accordance with the proposed 
changes to Sec.  1.75, must not include other parts of the application.
    Section 1.72: Paragraph (b) of Sec.  1.72 is proposed to be amended 
to prohibit the paper presenting the abstract to include any other 
portions of the application or other material. Presentation of material 
other than the abstract on the same page as the abstract makes the 
electronic indexing of the application more difficult. In addition, it 
is proposed to remove the last sentence of paragraph (b) to eliminate 
the prohibition on using the abstract to be used to interpret the 
claims to conform the rule to be consistent with Federal Circuit case 
law. See Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 
n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).
    Section 1.75: Paragraph (h) of Sec.  1.75 is proposed to be amended 
to prohibit a paper presenting claims from including any other portions 
of the application or other material. Presentation of material other 
than the claims on the same page as one or more claims makes the 
electronic indexing of the application more difficult.
    Section 1.97: Section 1.97 is proposed to be amended to move the 
last date on which an information disclosure statement (IDS) may be 
filed to the day prior to the mailing of the next Office action from 
the Office.
    Sections 1.97(b) and (c) are proposed to be amended to move the 
last date on

[[Page 14369]]

which an IDS may be filed from the day of mailing of an Office action 
to the day before the mailing of an Office action.
    Section 1.97(b)(3) is proposed to be amended to require filing of 
an IDS before the day of the mailing of the first Office action.
    Section 1.97(b)(4) is proposed to be amended to require filing of 
an IDS before the day of the mailing of the first Office action after 
the filing of a request for continued examination under Sec.  1.114.
    Section 1.97(c) is proposed to be amended to require filing of an 
IDS before the day of the mailing of any of a final action under Sec.  
1.113, a notice of allowance under Sec.  1.311, or an action that 
otherwise closes prosecution in the application, provided it is 
accompanied by one of: (1) The statement specified in Sec.  1.97(e); or 
(2) the fee set forth in Sec.  1.17(p).
    With PAIR, applicants can easily determine when Office actions are 
mailed by reviewing the change of status information for an application 
that is available over the Internet. Unless applicants are required to 
submit an IDS before Office actions are mailed, applicants may unfairly 
delay prosecution to meet their short-term needs by mailing an IDS on 
the same day as Office actions are mailed upon seeing that a mailing 
occurred through PAIR. Therefore, in order to promote efficient 
processing and provide the benefits of PAIR, a change in the ``mailing 
rule'' is being proposed.
    Section 1.98: Section 1.98 is proposed to be amended by adding a 
new paragraph (e), which provides that the requirement in Sec.  
1.98(a)(2)(i) for a copy of all listed U.S. patents and U.S. patent 
application publications does not apply to any IDS submitted in 
compliance with the Office's electronic filing system. Thus, for any 
IDS submitted to the Office via the Office's EFS, paper copies of U.S. 
patents and U.S. application publications cited in the IDS would no 
longer have to be supplied by applicants.
    An EFS software upgrade has added an IDS, submitted under the 
provisions of Sec. Sec.  1.97 and 1.98, as a type of electronic 
submission that may be made via the Office's EFS. Currently, the EFS 
may only be used to submit: (1) Certain non-provisional utility patent 
applications; (2) provisional applications; (3) biotechnology sequence 
listings; (4) copies of patent applications for purposes of having the 
copies of the patent application published (redacted publication, 
republication as amended, or voluntary publication); (5) assignments of 
patents and applications; and (6) Information Disclosure Statements. 
See Legal Framework for the Use of the Electronic Filing System, 1263 
Off. Gaz. Pat. Office 60, 61 (Oct. 8, 2002). With the EFS software 
upgrade, an applicant is able to electronically transmit an IDS with 
the filing of a new utility patent application, or as a subsequent 
filing. This EFS software upgrade is NOT usable for third party 
information disclosure submissions under Sec.  1.99. The IDS submission 
via EFS is the only electronic substitute for a paper IDS submission 
contemplated. EFS has been available to the general public for limited 
electronic filing since October 2000. See Electronic Filing System 
Available to Public, 1240 Off. Gaz. Pat. Office 45 (Nov. 14, 2000).
    Applicants may file an IDS via EFS by (1) entering the references' 
citation information in a fillable electronic form, equivalent to the 
paper PTO-1449 form (or revised form PTO/SB/08A and 08B) by using EFS 
software; and (2) transmitting the fillable electronic form data to the 
Office via EFS. This electronic EFS form currently allows only 
citations for U.S. patents and U.S. patent application publications. If 
any references to foreign patent documents or non-patent literature 
documents or unpublished U.S. applications are to be cited, then 
applicants will continue to submit those citations on a separate, 
conventional paper PTO-1449 form (or equivalent form) delivered with a 
printed copy of each cited foreign patent document, non-patent 
literature document and unpublished U.S. application via mail, 
facsimile transmission, or hand delivery. Applicants need not send the 
Office copies of any U.S. patent or U.S. application publication 
documents cited on a fillable electronic IDS form that is 
electronically transmitted to the Office via EFS. In those instances in 
which an applicant sends an IDS on the same day by EFS and by 
conventional delivery, and a fee under Sec.  1.97 is due, only one fee 
will be due if the applicant informs the Office in the conventional 
submission that such a submission is associated with an electronic 
submission on the same day in which the fee was paid.
    The EFS software provides a fillable electronic IDS form equivalent 
to a paper PTO-1449, Information Disclosure Statement form, in which 
citations for up to 50 U.S. patents and up to 50 U.S. patent 
application publications may be entered. This EFS fillable form has 
fields where statements of relevance and where notifications that the 
documents were cited in a communication from a foreign patent Office in 
accordance with Sec.  1.97(e) may be given. The EFS upgrade validates 
the format of data entered into the fillable electronic IDS form and 
provides the means to specify whether this fillable EFS IDS form is to 
be linked to an accompanying new application filing or is being filed 
in a previously filed application, and transmit the XML formatted IDS 
data on the fillable electronic form to the Office. The EFS software 
also provides fields to enter required fee payment information under 
Sec. Sec.  1.97(c)(2) and (d)(2).
    The fillable, EFS IDS form will be entered as a paper (but will 
actually be part of an electronic database) into the application file 
contents indicating that it was received on the date the complete 
transmission containing the form was received in the Office via EFS. 
This is the date the Office will refer to in considering compliance 
with Sec.  1.97.
    Examiners will consider the U.S. patents and U.S. application 
publications cited on an EFS transmitted IDS form provided the 
remaining requirements of Sec. Sec.  1.97 and 1.98 are met, by 
reviewing electronic or printed copies produced from the Office's 
electronic databases. It will be most important that the cited patent 
and application publication numbers be accurate and devoid of 
transcription error. There will be no applicant-provided copies of the 
disclosed documents in the application file for the examiner to review. 
Instead, because the Office will electronically retrieve the patents 
and application publications so identified by those numbers, the 
examiner will only be able to consider the documents so identified. As 
a corollary, examiners will only consider what is actually cited. 
Where, for example, an error is made in transcribing a U.S. patent 
number, and the examiner, after retrieving the patent associated with 
the number as entered in the IDS, determines that the patent associated 
with the number as entered in the IDS is not the correct number, 
because the inventor's name and issue date entered in the IDS does not 
match the corresponding data on the patent associated with the patent 
number entered in the IDS, the examiner will follow the procedure 
regarding the handling of non-complying information disclosure 
statements set forth in section 609 III(C)(1) of the Manual of Patent 
Examination Procedure (8th ed. 2001) (MPEP). The examiner may either 
initial the paper copy printed from the electronic IDS to indicate that 
the erroneously cited patent has been reviewed or line through the 
citation as not in compliance with Sec.  1.98.
    The only procedure for having such documents considered when an

[[Page 14370]]

erroneous patent or application publication number is cited in an eIDS 
will be by citing the correct document identifying number in a 
subsequent IDS, either paper or electronic, that conforms to the 
requirements of Sec. Sec.  1.97 and 1.98, as specified in MPEP 609 
III(C)(1) regarding corrections of the information in non-complying 
information disclosure statements.
    The IDS may be submitted as part of an EFS electronic application 
filing, or subsequent to an application filing, either in paper or via 
EFS. The ePAVE program will prompt the filer to associate an IDS file 
with a new application file and to provide payment information, where 
either is appropriate. As with the other types of electronic 
submissions, ePAVE will validate the format, display it to the filer, 
prompt for the filer's electronic signature, use the filer's digital 
certificate (a digital certificate may be obtained from the Office's 
Electronic Business Center), to encrypt the whole package, and transmit 
the submission to the Office. Upon receipt, the Office will send to the 
filer an electronic post card ``Acknowledgement Receipt'', including a 
server date stamp, a unique server number, the application number, and 
confirmation of the number of the files received by the Office. If the 
IDS submission is subsequent to the application filing, the filer will 
be required to enter both an application number and a confirmation 
number. A confirmation number is an additional four-digit identifier 
assigned to an application, and can be found in the upper left-hand 
corner of the official filing receipt. A filer will be required to have 
a customer number, obtained from the Office's Electronic Business 
Center, and an Office provided digital certificate to use EFS as with 
current practice.
    Section 1.99: Section 1.99 is proposed to be amended to provide 
that the Office will not enter any explanation of the patents or 
publications, or any other information (that is not limited to patents 
or publications) included in a submission. The Office will also not 
enter a submission that is not in compliance with the requirements of 
this section. The Office is capturing electronic images of all 
documents that form the Official file of certain applications and the 
original paper documents, if stored, will be stored off-site and will 
not be easily accessible, and if destroyed, will not be available. 
Therefore, any submission, or part of the submission, that is not in 
compliance with this section would not be captured as electronic images 
and, if such documents have been entered into the Official file, the 
Office will electronically remove the documents from the Official file.
    Paragraph (d) of Sec.  1.99 is proposed to be amended by deleting 
the word ``dispose of'' and replacing it with ``not enter.'' Paragraph 
(e) of Sec.  1.99 is proposed to be amended by deleting the phase 
``returned or discarded'' and replacing it with ``will not be entered'.
    Section 1.121: The manner of making amendments to the 
specification, claims and drawings is being revised with proposed 
changes to Sec.  1.121. While the process of making amendments would 
generally remain the same, relying on the use of replacement versions 
of the specification, claims and drawing figures, the process for 
submitting amendments is simplified. The submission of two versions 
(clean and marked-up) of amended subject matter, and the attendant 
editorial difficulties associated with this practice, will no longer be 
required other than for substitute specifications. For amending the 
specification (Sec.  1.121(b)(1) and (b)(2)), applicants would be 
required to submit a replacement paragraph or section marked-up to show 
changes relative to the immediate prior version. No clean version of 
replacement paragraphs or sections would be required. When the 
specification is to be amended extensively, a substitute specification 
marked-up to show changes relative to the immediate prior version would 
be submitted, as per Sec.  1.125 which is invoked by Sec.  1.121(b)(3). 
In this situation, a clean version of the specification would also be 
required, as per current Sec.  1.125(c). For amending the claims (Sec.  
1.121(c)), applicants would be required to provide replacement claims 
(marked-up to show changes relative to the immediate prior version) as 
part of a complete listing of all the claims in the application each 
time a claim is amended, which listing would include the status of each 
claim, and the text of each pending claim under examination. No 
separate clean version would be required at the time a claim is 
amended. For amending drawing figures (Sec.  1.121(d)), applicants 
would be required to submit a replacement figure with the changes made. 
No pre-approval of proposed changes in red ink will be required. In 
each situation, an explanation of the changes must be supplied.
    This proposed revised process for amending the specification, 
claims and drawing figures of pending patent applications will further 
facilitate the advent of electronic examination in the Office. The 
principal feature of this proposal, and the one which would most 
significantly impact the examination process, would require that a 
complete listing of claims (which includes the status of all claims and 
the text of pending claims under examination) be submitted as part of 
each amendment document that includes any amendments to the claims, 
with the complete listing totally replacing any and all previous 
versions of claims throughout an application. The conversion of all 
paper-based application files into electronic image format, together 
with the proposed changes to amendment practice, will enable the 
complete listing of all of the claims to be conveniently located and 
easily accessed on a computer screen for review by a patent examiner or 
the applicant, or where the application is open to the public.
    In order to promote uniformity and consistency of practice, the 
Office, in the proposed changes to Sec.  1.121, would require 
applicants to utilize only strike-through for deleted subject matter 
and underlining for added subject matter as markings to show changes 
made. No other method of markings will be permitted.
    As a result of the adoption of the proposed changes to Sec.  1.121, 
applicants will, in most cases, no longer be required to reproduce 
lengthy segments of the specification in both clean and marked-up 
versions. Only a marked-up version of a replacement paragraph or 
section will be required. Where a substitute specification has been 
provided because of extensive amendments, the substitute specification 
should be supplied as a clean replacement version, which will be 
entered. A marked-up version is also necessary to the examination 
process to show the examiner the changes that were made. These 
requirements are the same as the current requirements of Sec.  1.125(b) 
and (c) for submitting a substitute specification. With respect to the 
claims, the proposed changes will result in the filing of a complete 
listing of all of the claims in the application, and the status of each 
claim (in the listing), in a single amendment document each time an 
amendment to the claims is made. The status of every claim will be 
indicated in a parenthetical expression following each claim number, 
using the identifiers ``(original)'', ``(previously amended)'', 
``(currently amended)'', etc. Only the claims being changed at the time 
an amendment is filed will include the markings to show the changes. 
Claims not currently amended will be presented in the same amendment 
document in clean version. Applicants will no longer be required to 
submit both a clean version and a separate marked-up version of claims 
being

[[Page 14371]]

changed. Further, the submission of a clean version in addition to a 
marked-up version is strongly discouraged. Dual versions (clean and 
marked-up) may get confused and the wrong version may get entered into 
the application file. In such an event, an incorrect message would be 
given, as providing any claim text in clean version will be taken to be 
an assertion by applicants that no changes have been made relative to 
the immediate prior version. The burden of ensuring accuracy between 
the most recent and the prior versions would be borne by applicants.
    Amendments to a drawing figure will be made by submitting the 
actual changes in a replacement drawing sheet which is in compliance 
with Sec.  1.84. If multiple drawing figures are on a single drawing 
sheet, the replacement drawing sheet should include the figures which 
have not been revised as well as the revised drawing figure(s). A 
detailed explanation of each of the changes made to a drawing figure 
must also be provided in a separate section of the amendment document. 
If the changes are not acceptable to or approved by the examiner, the 
applicant would be notified and given a requirement for corrective 
action in the next Office action. In the absence of an objection to the 
drawings, no further drawing submission by applicant will be required.
    The proposed changes to amendment practice, if adopted in the final 
rule, will provide amendments ready for scanning and indexing into an 
electronic image format and incorporated into an electronic file 
wrapper that will be available and accessible to examiners on their 
individual PCs for further examination. Due to the large backfile of 
pending applications in the Office, the implementation of the scanning 
system and the creation of electronic file wrappers will be phased into 
the technology centers over a period of time. The proposed changes to 
the rule will require applicants to consolidate all of the claims of 
any currently pending application into a single amendment document each 
time any claim is amended, or a new claim is added. In the final rule, 
if it is adopted as proposed, all amendment documents will be required 
to include the full text of all pending claims (except for withdrawn 
claims) with their status in parentheses after the claim numbers, as 
well as an indication of the status of any claims which have been 
currently or previously canceled or withdrawn.
    Section 1.121(b) is proposed to be amended to clarify that 
applicants must make amendments to the specification by use of (1) 
replacement paragraph, or (2) replacement section. Provisions for 
submitting a substitute specification have been cross-referenced to 
Sec.  1.125. Provisions for amending claims are provided for in other 
sections of this rule (paragraph (c)).
    It is proposed that paragraphs (b)(1)(ii), (b)(2)(ii) and 
(b)(3)(ii) be changed to require that the amendment include a version 
of the amended paragraph, section or substitute specification (by 
reference to Sec.  1.125) marked-up to show the changes by using 
``strike-through'' as the method for showing deletions of subject 
matter in the specification. Similarly the Office proposes to require 
underlining to show additions of subject matter. Only strike-through 
and underlining should be used as the method to show changes.
    It is further proposed to eliminate current paragraphs (b)(1)(iii), 
(b)(2)(iii) and (b)(3)(iii).
    It is proposed to add new paragraph (b)(5) to indicate that precise 
instructions as to location of the changes must be provided for entry 
of amendments to the specification. Deletion of a paragraph or section 
may be made by instruction to cancel only; no actual text to be 
canceled should be submitted. Once an amended paragraph, section, or 
substitute specification is presented in an amendment document, there 
is no further need for the applicant to re-present the amended 
submission in a subsequently filed amendment document.
    It is proposed to replace current paragraphs (c)(1) through (c)(3) 
with revised paragraphs (c) and (c)(1) through (c)(5). Paragraph (c) as 
revised would provide for a total rewriting of a claim each time the 
claim is amended, including markings to show the changes being made 
relative to the immediate prior version of the claim. This section 
would also require submitting a complete listing of all pending claims 
in the application, including the status of each and every claim in 
every amendment document that includes an amendment to the claims. This 
listing would replace all prior versions of the claims (except for any 
withdrawn claims), and listings of the claims in the application. The 
claim status required with each amendment document would be indicated 
in a parenthetical expression following the claim number. The status of 
all claims in the application, even those previously canceled or 
withdrawn, would be indicated with each amendment document.
    In order to promote uniformity and consistency, only the following 
defined identifiers should be used to indicate the status of the claims 
(in parentheses after the claim number):

(Original): Claim filed with the application
(Currently amended): Claim being amended in the current amendment 
document
(Previously amended): Claim not being currently amended, but which was 
amended in a previous amendment document
(Canceled): Claim deleted from the application
(Withdrawn): Claim still in the application, but in a nonelected status
(Previously added): Claim added in an earlier amendment document
(New): Claim being added in the current amendment document
(Reinstated--formerly claim  --): Claim deleted in an earlier 
amendment document, but represented with a new claim number in current 
amendment
(Previously reinstated): Claim deleted in an earlier amendment and 
reinstated in an earlier amendment document
(Re-presented `` formerly dependent claim  --):Dependent claim 
re-presented in independent form in current amendment document
(Previously re-presented): Dependent claim re-presented in independent 
form in an earlier amendment, but not currently amended

    As a result of this proposed change, each amendment document would 
be self-contained, i.e., it would include a complete set of claims for 
examination and would provide the status of all of the claims in one 
location in the file.
    An example of how the claims, and the status of the claims, would 
be presented is as follows (use of the word ``claim'' before the claim 
number is optional):

Claims 1-5 (canceled) (Note: consecutive canceled or withdrawn claims 
may be aggregated)
Claim 6 (withdrawn)
Claim 7 (previously amended): A bucket with a handle
Claim 8 (currently amended): A bucket with a green blue handle
Claim 9 (withdrawn)
Claim 10 (original): A bucket with a wooden handle
Claim 11: (new): A bucket with plastic sides and bottom

    Paragraph (c)(1) would require the use of strike-through (for 
deletions) and underlining (for additions) to indicate how an amended 
claim differs from its immediate prior version. The proposed amendment 
to this section eliminates the previously accepted use of equivalent 
marking systems. No other

[[Page 14372]]

method of markings or comparison (other than strike-through and 
underlining) would be permitted. Only claims of the status ``currently 
amended'' would include markings showing changes made.
    Paragraph (c)(2) would require that the current amendment document 
include not only the marked-up version of claims being currently 
amended, but also the submission of a clean version of pending claims 
not being amended in the current amendment document. The presentation 
of clean text (not underlined) in any claim would constitute an 
assertion that no changes have been made from the immediate prior 
version of the same claim. This would relieve the Office of the burden 
of cross-reading various versions of the same claim to ensure accuracy 
of rewritten claims. The text of canceled or withdrawn claims should 
not be presented in each amendment document; these claims should be 
indicated as being in the status of ``(canceled)'' or ``(withdrawn)'.
    Paragraph (c)(3) would provide for the cancellation of any claim by 
mere instructions to cancel. If no instructions to cancel a specific 
claim were submitted in an amendment paper, listing the claim as 
canceled in the claim status would constitute an instruction to cancel 
the claim; no other instruction would be necessary. Any added claims 
(in the current amendment document) should be merely identified in the 
status parenthetical expression as ``(new)'' and should not be 
underlined.
    As proposed in paragraph (c)(4), the claims should be presented in 
ascending numerical order. This would prevent the grouping of claims by 
status (all new claims together, all amended claims together, etc.), 
and ensure a complete set of claims in numerical order, regardless of 
status. Consecutive claims of the same status, however, could be 
aggregated (e.g., ``Claims 1-5 (previously canceled)''). Further, it is 
proposed to revise paragraph (c)(4) to require that any sheet of an 
amendment paper including part of the text of a claim shall not include 
material directed to any other part of the amendment or any remarks 
concerning the claims. This requirement will facilitate indexing of the 
application papers.
    Paragraph (c)(5) would require that a claim canceled in its 
entirety could only be reinstated if presented as a new claim with a 
new claim number.
    Paragraph (d) would require that any drawing changes be submitted 
in compliance with Sec.  1.84 on replacement sheets in an attachment to 
an amendment document. An accompanying detailed explanation of all of 
the changes would be provided on a separate sheet in the drawing 
amendments or remarks section of the amendment document. Any amended 
replacement drawing sheet should include all of the figures appearing 
on the immediate prior version of the sheet, even though only one 
figure may be amended. The figure or figure number of an amended 
drawing should not be labeled as ``amended.'' If a drawing figure is to 
be canceled, the appropriate figure must be removed from the 
replacement sheet, and where necessary, the remaining figures must be 
renumbered. Additional replacement sheets may be necessary to show the 
renumbering of the remaining figures. The replacement sheet(s) should 
be labeled ``Replacement Sheet'' in the page header so as not to 
obstruct any portion of the drawing figures. If the changes are not 
accepted by the examiner, the applicant would be notified and informed 
of any required corrective action in the next Office action. No further 
drawing submission of the amended drawing figure(s) by applicant would 
be required, unless applicant is so notified.
    As proposed in paragraph (d)(1), the applicant would be permitted 
to provide a marked-up copy of any figure being amended with the 
amendment document. This mark-up would be used by the Office to 
determine the changes being made in the drawings.
    As proposed in paragraph (d)(2), examiners would be permitted to 
require a marked-up copy of a figure that has been or is required to be 
revised. The examiner may make the requirement in an Office action 
requiring a drawing correction, or after a drawing amendment has been 
made.
    A change is proposed to the last line of paragraph (g) in order to 
bring it into conformity with earlier changes, ``(c)(1)'' is changed to 
``(c) and (c)(1) through (c)(5)'.
    It is proposed that paragraph (h) be added to require that each 
section of an amendment (e.g., amendments to the claims, amendments to 
the specification, replacement drawings, remarks) begin on a separate 
sheet of the amendment paper.
    Paragraphs (h), (i), and (j) have been renamed as (i), (j), and 
(k), respectively.
    Section 1.125: Paragraph (b) is proposed to be revised to add a 
cross-reference to Sec.  1.312 to remind applicants that for 
submissions of substitute specifications filed after the notice of 
allowance has been mailed and up to the time of payment of the issue 
fee, entry of the substitute specification is not a matter of right.
    Paragraphs (c) of Sec.  1.125 is proposed to be revised to require 
the presentation by applicant of both a marked-up version of the 
specification (using strike-through to indicate deleted subject matter 
and underlining to indicate added subject matter) and a clean version 
without markings.
    Section 1.823: Section 1.823 is proposed to be amended by revising 
paragraph (a)(1) to require that any sheet including a part of a 
sequence listing not include material other than part of a sequence 
listing. This change is to facilitate indexing of the specification.

Rule Making Considerations

    Administrative Procedure Act: This notice proposes changes to the 
rules of practice that facilitate electronic image record management of 
patent application files to support the beginning-to-end electronic 
processing of patent applications. The changes proposed in this notice 
are limited to the format for and the manner of making amendments to 
patent applications, the handling of patent applications and other 
papers within the Office, the manner of filing information disclosure 
statements, and the procedures for electronic exchange of priority 
documents with other intellectual property offices. Therefore, these 
changes involve rules of agency practice and procedure under 5 U.S.C. 
553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 
(D.C. Cir. 2001). Therefore, prior notice and opportunity for public 
comment are not required pursuant to 5 U.S.C. 553(b) or (c) (or any 
other law). Nevertheless, the Office is providing this opportunity for 
public comment on the changes proposed in this notice because the 
Office desires the benefit of public comment on these proposed 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), an initial regulatory flexibility analysis under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C. 
603.
    Executive Order 13132: This rule making 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 rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This proposed rule involves information 
collection requirements which are

[[Page 14373]]

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 proposed rule have been 
reviewed and previously approved by OMB under the following control 
numbers 0651-0021, 0651-0031, 0651-0032 and 0651-0033. The United 
States Patent and Trademark Office is not resubmitting an information 
collection package to OMB for its review and approval because the 
changes in this proposed rule would not affect the information 
collection requirements associated with the information collection 
under OMB control numbers 0651-0021, 0651-0031, 0651-0032 and 0651-
0033.
    The title, description and respondent description of each of the 
information collections is shown below with an estimate of the annual 
reporting burdens. Included in the estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impacts of 
the changes in this proposed rule are to (1) expressly provide for the 
electronic submission of an information disclosure statement; (2) 
provide for a slight change in the format of an application being filed 
in order to accommodate for the scanning and indexing of different 
sections of the application file; and (3) provide for a change in the 
manner of making amendments to an application consistent with the 
Office's efforts to establish a patent electronic image management 
system.
    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401, 
PCT/IB/328, PTO/SB/61/PCT, PTO/SB/64/PCT.
    Type of Review: Approved through December of 2003.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Federal Agencies or Employees, Not-for-Profit Institutions, 
Small Businesses or Organizations, farms, and State, Local or Tribal 
Government.
    Estimated Number of Respondents: 331,407.
    Estimated Time Per Response: 0.25 (15 minutes) to 4.0 (4 hours).
    Estimated Total Annual Burden Hours: 401,202 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: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB//08A/08B/21/22/23/24/25/26/27/30/31/32/35/37/
36/ 42/43/61 61/PCT/62/63/64 64/PCT/67/68/91/92/96/97 PTO-2053-A/B PTO-
2054-A/B PTO-2055-A/B.
    Type of Review: Approved through April of 2003.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 2,247,270.
    Estimated Time Per Response: 1 minute 48 seconds to 4 hours.
    Estimated Total Annual Burden Hours: 1,021,822 hours.
    Needs and Uses: During the processing for 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; Submission of priority documents and Amendments.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/13PCT/16-19/29/101-110.
    Type of Review: Approved through April of 2003.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, farms, Federal 
Government, and State, Local, or Tribal Governments.
    Estimated Number of Respondents: 319,350.
    Estimated Time Per Response: 24 minutes to 10 hours and 75 minutes.
    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, Provisional Application 
Coversheet, 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/44/50/51, 51S/52/53/55/56/57/58, PTOL-85B.
    Type of Review: Approved through January of 2004.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, farms, State, Local 
and Tribal Governments, and Federal Government.
    Estimated Number of Respondents: 205,480.
    Estimated Time Per Response: 0.03 (2 minutes) to 2.0 (2 hours).
    Estimated Total Annual Burden Hours: 63,640 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.

    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, 
DC 20231, or to the Office of Information and Regulatory Affairs, OMB, 
725 17th Street, NW., Washington, DC 20503, (Attn: PTO Desk Officer).
    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,

[[Page 14374]]

Reporting and record keeping requirements, Small businesses.
    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be 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 1.3 is revised to read as follows:


Sec.  1.3  Business to be conducted with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the United States Patent and Trademark Office with 
decorum and courtesy. Papers presented in violation of this requirement 
will be submitted to the Director and will not be entered. Complaints 
against examiners and other employees must be made in correspondence 
separate from other papers.
    3. Section 1.9 is amended by adding paragraph (R) to read as 
follows:


Sec.  1.9  Definitions.

* * * * *
    (R) Paper as used in this Chapter means a document that may exist 
in electronic, computer readable form or in physical form, and 
therefore does not necessarily imply physical sheets of paper.
* * * * *
    4. Section 1.14 is revised to read as follows:


Sec.  1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications 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) Records associated with patent applications other than 
international applications (see paragraph (h) of this section for 
international applications) shall be available in the following 
situations:
    (i) Patented applications and Statutory Invention Registrations. 
The file of an application that has issued as a patent or published as 
a statutory invention registration is available to the public as set 
forth in Sec.  1.11(a). A copy of the patent application-as-filed, the 
file contents of the application, or a specific document in the file of 
such an application shall be provided upon request and payment of the 
appropriate fee set forth in Sec.  1.19(b).
    (ii) Published abandoned applications. The file of an abandoned 
application that has been published as a patent application publication 
is available to the public as set forth in Sec.  1.11(a). A copy of the 
application-as-filed, the file contents of the published application, 
or a specific document in the file of the published application shall 
be provided to any person upon request, and payment of the appropriate 
fee set forth in Sec.  1.19(b).
    (iii) Published pending applications. A copy of the application-as-
filed, the file contents of the published application, or a specific 
document in the file of a pending application that has been published 
as a patent application publication shall be provided to any person 
upon request, and payment of the appropriate fee set forth in Sec.  
1.19(b). 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. The Office will not provide 
access to the paper file of a pending application that has been 
published, except as provided in paragraph (c) or (i) of this section.
    (iv) Unpublished abandoned applications (including provisional 
applications) that are referenced in certain documents. The file 
contents of an abandoned application that is referenced in a U.S. 
patent, Statutory Invention Registration, a U.S. patent application 
publication, or an international patent application publication of an 
international application that was published in accordance with PCT 
Article 21(2) are available to the public, if a written request is 
submitted. Also, the file contents of an abandoned application that is 
relied upon under 35 U.S.C. 119(e), 120, 121, or 365 by an application 
that has issued as a U.S. patent, or in an application that has 
published as a Statutory Invention Registration, U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2) are 
available to the public, if a written request is submitted. A copy of 
the application-as-filed, the file contents of the application, or a 
specific document in the file of the application shall be provided to 
any person upon written request, and payment of the appropriate fee 
(Sec.  1.19(b)).
    (v) Unpublished pending applications that are referenced in certain 
documents. A copy of the application-as-filed of a pending application 
that is referenced in a U.S. patent, Statutory Invention Registration, 
a U.S. patent application publication, or an international patent 
application publication that was published in accordance with PCT 
Article 21(2) shall be provided to any person upon written request, 
including the fee set forth in Sec.  1.19(b)(1). Also, a copy of the 
application-as-filed of a pending application that is relied upon under 
35 U.S.C. 119(e), 120, 121, or 365 by an application that has issued as 
a U.S. patent, or in an application that has published as a Statutory 
Invention Registration, a U.S. patent application publication, or an 
international patent application publication that was published in 
accordance with PCT Article 21(2) shall be provided to any person upon 
written request, including the fee set forth in Sec.  1.19(b)(1). Until 
the application is abandoned, patented, or published as a Statutory 
Invention Registration or a U.S. patent application publication, a 
granted petition for access (see paragraph (i) of this section), or a 
power to inspect (see paragraph (c) of this section) is necessary to 
obtain the file of the application.
    (vi) Applications that were not published or patented, and are not 
referenced in a U.S. patent, a Statutory Invention Registration, a U.S. 
patent application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2), or 
relied upon under 35 U.S.C. 119(e), 120, 121, or 365 in an application 
that has issued as a U.S. patent, or been published as a Statutory 
Invention Registration, a U.S. patent application publication, or an 
international patent application publication that was published in 
accordance with PCT Article 21(2). Applications that were not published 
or patented, and are not referenced in a U.S. patent, a Statutory 
Invention Registration, a U.S. patent application publication, or an 
international patent application publication that was published in 
accordance with PCT Article 21(2) are not available to the public, 
unless the application that issued as the U.S. patent or was published 
as the Statutory Invention Registration, U.S. patent application 
publication, or an international patent application publication that 
was published in accordance with PCT Article 21(2) claims the benefit 
of the application under 35 U.S.C. 119(e), 120, 121, or 365.

[[Page 14375]]

A granted petition for access (see paragraph (i) of this section), or a 
power to inspect (see paragraph (c) of this section) is necessary to 
obtain the application, or a copy of the application.
    (2) Information concerning a patent application may be communicated 
to the public if the patent application is identified in paragraphs 
(a)(1)(i) through (a)(1)(v) of this section. The information that may 
be communicated to the public (i.e., status information) includes:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b);
    (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; and
    (iv) Whether an application claims the benefit of the application 
(i.e., whether there are any applications that claim the benefit of the 
filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the 
application), and if there are any such applications, the numerical 
identifier of the application, the specified relationship between the 
applications (e.g., continuation), whether the application is pending, 
abandoned or patented, and whether the application has been published 
under 35 U.S.C. 122(b).
    (b) Electronic access to an application. Where a copy of the 
application papers or access to the application is available pursuant 
to paragraphs (a)(1)(i) through (a)(1)(v) of this section, the Office 
may at its discretion provide access only to an electronic copy of the 
specification, drawings, and file contents of the application.
    (c) Power to inspect a pending or abandoned application. Access to 
an application shall be provided to any person if the application file 
is available, and the application contains written authority (e.g., a 
power to inspect) granting access to such person. The written authority 
must be signed by:
    (1) An applicant;
    (2) An attorney or agent of record;
    (3) An authorized official of an assignee of record (made of record 
pursuant to Sec.  3.71 of this chapter); or
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec.  1.53 or the national stage 
documents filed under Sec.  1.495, if an executed oath or declaration 
pursuant to Sec.  1.63 or Sec.  1.497 has not been filed.
    (d) Applications reported to Department of Energy. Applications for 
patents which appear to disclose, purport to disclose or do disclose 
inventions or discoveries relating to atomic energy are reported to the 
Department of Energy, which Department will be given access to the 
applications. Such reporting does not constitute a determination that 
the subject matter of each application so reported is in fact useful or 
is an invention or discovery, or that such application in fact 
discloses subject matter in categories specified by 42 U.S.C. 2181(c) 
and (d).
    (e) Unpublished applications provided to other Intellectual 
Property Offices. Before a patent application is published or otherwise 
becomes available to the public pursuant to paragraphs (a)(1)(i) 
through (a)(1)(iv) of this section, the Office may, pursuant to an 
agreement between the Office and another Intellectual Property (IP) 
Office, provide the other IP Office with access to the electronic 
record of the application without charge to applicant, if applicant 
consents. After an application has been published, such consent is not 
required.
    (f) Decisions by the Director or the Board of Patent Appeals and 
Interferences.
    (1) Any action of the Board of Patent Appeals and Interferences, or 
any decision on petition, may be published or made available for public 
inspection without applicant's or patent owner's permission if rendered 
in a file open to the public pursuant to Sec.  1.11 or available 
pursuant to Sec.  1.14(e)(2), in an application that has been published 
in accordance with Sec. Sec.  1.211 through 1.221, or in an application 
claiming benefit of an earlier filing date under 35 U.S.C. 119(a)-(d), 
120, 121 or 365 of an application that has been published or patented.
    (2) Any action of the Board of Patent Appeals and Interferences, or 
any decision on petition not publishable under paragraph (f)(1) of this 
section, may be published or made available for public inspection if 
the Director believes the action or decision involves an interpretation 
of patent laws or regulations that would be of important precedential 
value; and the applicant, or any party involved in the interference, 
does not within two months after being notified of the intention to 
make the action or decision public, object in writing on the ground 
that the decision discloses a trade secret or other confidential 
information and states that such information is not otherwise publicly 
available. If an action or decision discloses such information, the 
applicant or party shall identify the deletions in the text of the 
action or decision considered necessary to protect the information. If 
the applicant or the party considers that the entire action or decision 
must be withheld from the public to protect such information, the 
applicant or party must explain why. Applicants or parties will be 
given time, not less than twenty days, to request reconsideration and 
seek court review before any portions of actions or decisions are made 
public over their objection. See Sec.  2.27 for trademark applications.
    (g) Publication pursuant to Sec.  1.47. Information as to the 
filing of an application will be published in the Official Gazette in 
accordance with Sec.  1.47(c).
    (h) 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)), if:
    (i) With respect to the Home Copy (the copy of the international 
application kept by the Office in its capacity as the Receiving Office, 
see PCT Article 12(1)), the international application was filed with 
the U.S. Receiving Office;
    (ii) With respect to the Search Copy (the copy of the international 
application kept by the Office in its capacity as the International 
Preliminary Searching Authority, see PCT Article 12(1)), the U.S. acted 
as the International Searching Authority; or
    (iii) With respect to the Examination Copy (the copy of an 
international application kept by the Office in its capacity as the 
International Preliminary Examining Authority), 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 a publication of 
an international patent 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

[[Page 14376]]

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)(4)).
    (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 (a) 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 
(a)(1)(i)-(iv) and (h)(3) of this section will not be permitted with 
respect to the Examination Copy in accordance with PCT Article 38.
    (i) 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.
    5. Section 1.17 is amended by revising paragraph (h) 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 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
* * * * *
    6. Section 1.19 is amended by revising paragraph (b)(1) to read as 
follows:
Sec.  1.19 Document supply fees.
* * * * *
    (b) * * *
    (1) Certified or uncertified copy of the paper portion of patent 
application as filed, except for a certified copy provided pursuant to 
an agreement between the Office and another Intellectual Property (IP) 
Office when the certified copy is provided to the other IP Office in 
electronic form and when written authorization under 35 U.S.C. 122(a) 
to permit access to file information by the other IP Office receiving 
the priority document is given by applicant for which there is no fee:
    (i) Regular service--$15.00
    (ii) Expedited regular service--$30.00
* * * * *
    7. Section 1.52 is amended by revising paragraphs (a) and (b) to 
read as follows:


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

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding.
    (1) All papers, other than drawings, that are submitted on paper or 
by facsimile transmission, and are to become a part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding, must be on sheets of 
paper that are the same size, not permanently bound together, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (\3/4\ inch), a left side margin of at least 2.5 cm (1 
inch), a right side margin of at least 2.0 cm (\3/4\ inch), and a 
bottom margin of at least 2.0 cm (\3/4\ inch);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of the 
United States Patent and Trademark Office should have no holes in the 
sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on paper forms 
provided by the Office, or to the copy of the patent submitted on paper 
in double column format as the specification in a reissue application 
or request for reexamination.
    (4) See Sec.  1.58 for chemical and mathematical formulae and 
tables, and Sec.  1.84 for drawings.
    (5) If papers that are submitted on paper or by facsimile 
transmission do not comply with paragraph (a)(1) of this section and 
are submitted as part of the permanent record, other than the drawings, 
applicant, or the patent owner, or the requester in a reexamination 
proceeding, will be notified and given a period of time within which to 
provide substitute papers that comply with paragraph (a)(1) of this 
section in order to avoid abandonment of the application in the

[[Page 14377]]

case of an applicant for patent, termination of proceedings in the case 
of a patent owner in a reexamination proceeding, or refusal of 
consideration of the papers in the case of a third party requester in a 
reexamination proceeding.
    (6) Papers that are submitted electronically to the Office must be 
formatted and transmitted in compliance with the Office's electronic 
filing system requirements.
    (7) If the papers that are submitted electronically to the Office 
do not comply with paragraph (a)(6) of this section, the applicant, or 
the patent owner, or the requester in a reexamination proceeding, will 
be notified and given a period of time within which to provide 
substitute papers that comply with paragraph (a)(6) of this section in 
order to avoid abandonment of the application in the case of an 
applicant for patent, termination of proceedings in the case of a 
patent owner in a reexamination proceeding, or refusal of consideration 
of the papers in the case of a third party requester in a reexamination 
proceeding.
    (b) The application (specification, including the claims, drawings, 
and oath or declaration) or reexamination proceeding and any amendments 
or corrections to the application or reexamination proceeding.
    (1) The application or proceeding and any amendments or corrections 
to the application (including any translation submitted pursuant to 
paragraph (d) of this section) or proceeding, except as provided for in 
Sec.  1.69 and paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the 
translation is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Sec. Sec.  1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier) lettering style having capital letters which are at 
least 0.21 cm (0.08 inch) high; and
    (iii) Only a single column of text.
    (3) The claim or claims must commence on a separate physical sheet 
or electronic page (Sec.  1.75(h)).
    (4) The abstract must commence on a separate physical sheet or 
electronic page or be submitted as the first page of the patent in a 
reissue application or reexamination proceeding (Sec.  1.72(b)).
    (5) Other than in a reissue application or reexamination 
proceeding, the pages of the specification including claims and 
abstract must be numbered consecutively, starting with 1, the numbers 
being centrally located above or preferably, below, the text.
    (6) Other than in a reissue application or reexamination 
proceeding, the paragraphs of the specification, other than in the 
claims or abstract, may be numbered at the time the application is 
filed, and should be individually and consecutively numbered using 
Arabic numerals, so as to unambiguously identify each paragraph. The 
number should consist of at least four numerals enclosed in square 
brackets, including leading zeros (e.g., [0001]). The numbers and 
enclosing brackets should appear to the right of the left margin as the 
first item in each paragraph, before the first word of the paragraph, 
and should be highlighted in bold. A gap, equivalent to approximately 
four spaces, should follow the number. Nontext elements (e.g., tables, 
mathematical or chemical formulae, chemical structures, and sequence 
data) are considered part of the numbered paragraph around or above the 
elements, and should not be independently numbered. If a nontext 
element extends to the left margin, it should not be numbered as a 
separate and independent paragraph. A list is also treated as part of 
the paragraph around or above the list, and should not be independently 
numbered. Paragraph or section headers (titles), whether abutting the 
left margin or centered on the page, are not considered paragraphs and 
should not be numbered.
    (7) If papers that do not comply with paragraphs (b)(1) through 
(b)(5) of this section are submitted as part of the application, the 
applicant, or patent owner, or requester in a reexamination proceeding, 
the applicant, patent owner or requester in a reexamination proceeding 
will be notified and given a period of time within which to provide 
substitute papers that comply with paragraphs (b)(1) through (b)(5) of 
this section in order to avoid abandonment of the application in the 
case of an applicant for patent, termination of proceedings in the case 
of a patent owner in a reexamination proceeding, or refusal of 
consideration of the papers in the case of a third party requester in a 
reexamination proceeding.
* * * * *
    8. Section 1.59 is revised to read as follows:


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

    (a)(1) Information in an application will not be expunged, except 
as provided in paragraph (b) of this section.
    (2) Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any 
preliminary amendment specifically incorporated into an executed oath 
or declaration under Sec. Sec.  1.63 and 1.175) will not be expunged 
from the application file.
    (b) An applicant may request that the Office expunge information, 
other than what is excluded by paragraph (a)(2) of this section, by 
filing a petition under this paragraph. Any petition to expunge 
information from an application must include the fee set forth in Sec.  
1.17(h) and establish to the satisfaction of the Director that the 
expungement of the information is appropriate.
    (c) Upon request by an applicant and payment of the fee specified 
in Sec.  1.19(b), the Office will furnish copies of an application, 
unless the application has been disposed of (see Sec. Sec.  1.53(e), 
(f) and (g)). The Office cannot provide or certify copies of an 
application that has been disposed of.
    9. Section 1.71 is amended by adding paragraph (f) to read as 
follows:


Sec.  1.71  Detailed description and specification of the invention.

* * * * *
    (f) The specification must commence on a separate sheet and each 
sheet including part of the specification may not include other parts 
of the application.
    10. Section 1.72 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.72  Title and abstract.

* * * * *
    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The sheet or sheets presenting the abstract may not 
include other parts of the application. The abstract in an application 
filed under 35 U.S.C. 111 may not exceed 150 words in length. The 
purpose of the abstract is to enable the United States Patent and 
Trademark Office and the public generally to determine quickly from a

[[Page 14378]]

cursory inspection the nature and gist of the technical disclosure.
* * * * *
    11. Section 1.75 is amended by revising paragraph (h) to read as 
follows:


Sec.  1.75  Claim(s).

* * * * *
    (h) The claim or claims must commence on a separate sheet and any 
sheet including a claim or portion of a claim may not contain any other 
parts of the application.
* * * * *
    12. Section 1.97 is amended by revising paragraphs (b)(3), (b)(4) 
and (c) to read as follows:


Sec.  1.97  Filing of information disclosure statement.

* * * * *
    (b) * * *
    (3) Before the day of the mailing of a first Office action on the 
merits; or
    (4) Before the day of the mailing of a first Office action after 
the filing of a request for continued examination under Sec.  1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the day of the mailing date of any of a final action under Sec.  
1.113, a notice of allowance under Sec.  1.311, or an action that 
otherwise closes prosecution in the application, and it is accompanied 
by either:
    (1) The statement specified in paragraph (e) of this section; or
    (2) The fee set forth in Sec.  1.17(p).
* * * * *
    13. Section 1.98 is amended by adding paragraph (e) to read as 
follows:


Sec.  1.98  Content of information disclosure statement.

* * * * *
    (e) The requirement in paragraph (a)(2)(i) of this section for a 
copy of all listed U.S. patents and U.S. patent application 
publications does not apply to any information disclosure statement 
submitted in compliance with the Office's electronic filing system.
    14. Section 1.99 is amended by revising paragraphs (d) and (e) to 
read as follows:


Sec.  1.99  Third-party submission in published application.

* * * * *
    (d) A submission under this section shall not include any 
explanation of the patents or publications, or any other information. 
The Office will not enter 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 not be entered.
* * * * *
    15. Section 1.121 is revised to read as follows:


Sec.  1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made 
by filing a paper, in compliance with Sec.  1.52, directing that 
specified amendments be made.
    (b) Specification. Amendments to the specification other than the 
claims and computer listings (Sec.  1.96) and sequence listings (Sec.  
1.825) must be made by replacement paragraph, replacement section or 
substitute specification in the manner specified in this section.
    (1) Amendment by instruction to delete, replace, or add a 
paragraph. Amendments to the specification may be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a deleted 
paragraph with one or more replacement paragraphs, or add one or more 
paragraphs; and
    (ii) Any replacement or added paragraph(s) marked-up to show all 
the changes relative to the previous version of the paragraph(s). The 
changes must be shown by strike-through (for deleted matter) or 
underlining (for added matter).
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided in Sec.  1.77(b), 
Sec.  1.154(b), or Sec.  1.163(c), amendments to the specification, 
other than the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction to 
delete that section of the specification and to replace such deleted 
section with a replacement section; and
    (ii) A replacement section marked-up to show all changes relative 
to the previous version of the section. The changes must be shown by 
strike-through (for deleted matter) or underlining (for added matter).
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification; and
    (ii) A substitute specification in compliance with Sec.  1.125(c).
    (4) Reinstatement: Deleted matter may be reinstated only by a 
subsequent amendment presenting the previously deleted matter.
    (5) Presentation: Instructions for entry of replacement paragraphs 
or sections must be provided with an unambiguous and precise location. 
Deletion of a paragraph or section is permitted by instruction only; no 
text to be canceled should be presented. Once a paragraph, section, or 
specification is amended in a first amendment document, the paragraph, 
section or specification shall not be re-presented in successive 
amendment documents unless it is amended again or a substitute 
specification is provided.
    (c) Claims. Amendments to a claim must be made by rewriting the 
entire claim with all changes (e.g., additions, deletions, 
modifications) as indicated in this section. Each amendment document 
that includes a change to an existing claim, or submission of a new 
claim, must include a complete listing of all claims in the 
application. The listing will serve to replace all prior versions of 
the text of the claims (except for withdrawn claims) in the 
application. The text of all pending claims (except for withdrawn 
claims) must be submitted in a single amendment document each time any 
claim is amended. The status of each of the claims in the application, 
including any previously canceled or withdrawn claims, must be 
indicated in each amendment document. Status is indicated by a 
parenthetical expression following the claim number and should be 
indicated by use of one of the following identifiers: (Original), 
(Currently amended), (Previously amended), (Canceled), (Withdrawn), 
(Previously added), (New), (Reinstated--formerly claim --), 
(Previously reinstated), (Re-presented--formerly dependent claim 
 --), or (Previously re-presented). Only claims of status 
``currently amended'' shall include markings.

[[Page 14379]]

    (1) Currently amended claims: All claims being currently amended in 
an amendment paper shall be submitted with markings to indicate the 
changes that have been made relative to the immediate prior version of 
the claims. The changes in any amended claim shall be shown by strike-
through (for deleted matter) or underlining (for added matter). Only 
claims of status ``currently amended'' shall include markings.
    (2) Original, previously amended, or previously added claims: The 
text of pending claims not being currently amended shall be presented 
in each amendment document in clean version, i.e., without any markings 
in the presentation of clean text. The presentation of clean text in 
any claim will constitute an assertion that it has not been changed 
relative to the immediate prior version. The text of canceled and 
withdrawn claims shall not be presented, but must be indicated by only 
claim number and status.
    (3) Cancelled and new (added) claims: A claim is canceled by 
providing an instruction to cancel the claim by claim number. No markup 
shall be presented. Listing a claim as canceled will constitute an 
instruction to cancel the claim. Any claims added by amendment must be 
indicated as (new), and shall not be underlined.
    (4) When one or more claims are amended or added in an amendment 
document, all of the claims shall be presented in a listing in 
ascending numerical order. Consecutive canceled or withdrawn claims may 
be aggregated into one statement (e.g., Claims 1-5 (canceled)). The 
text of the claims shall commence on a separate sheet of the amendment 
document and the sheet(s) that contain the text of any part of the 
claims shall not contain any other part of the amendment.
    (5) A claim canceled by amendment (deleted in its entirety) may be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (d) Drawings. Application drawings are amended in the following 
manner: Any changes to the application drawings must be in compliance 
with Sec.  1.84 and must be submitted as replacement sheets as an 
attachment to the amendment document. Any replacement sheets shall 
include all of the figures appearing on the immediate prior version of 
the sheet, even if only one figure is amended. Applicant shall explain 
in detail the changes made beginning on a separate sheet in the drawing 
amendments or remarks section of the amendment paper.
    (1) The applicant may include a marked-up copy of one or more of 
the figures being amended indicating the changes being made.
    (2) The applicant shall include a marked-up copy of any figure that 
has been amended indicating the changes being made when required by the 
examiner.
    (e) Disclosure consistency. The disclosure must be amended, when 
required by the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence between the 
claims, the remainder of the specification, and the drawings.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments. Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's 
amendment by identifying the precise point in the specification or the 
claim(s) where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2), (c) or (c)(1) to (c)(5) is not required.
    (h) Amendment sections. Each section of an amendment document must 
begin on a separate sheet.
    (i) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance with Sec.  1.173.
    (j) Amendments in reexamination proceedings. Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance with Sec.  1.530.
    (k) Amendments in provisional applications. Amendments in 
provisional applications are not normally made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.
    16. Section 1.125 is proposed to be amended by revising paragraphs 
(b) and (c) to read as follows:


Sec.  1.125  Substitute specification.

* * * * *
    (b) Subject to Sec.  1.312, a substitute specification, excluding 
the claims, may be filed at any point up to payment of the issue fee if 
it is accompanied by a statement that the substitute specification 
includes no new matter.
    (c) A substitute specification submitted under this section must be 
submitted with markings showing all the changes (underlining to 
indicate subject matter being added and strike-through indicating 
subject matter being deleted) relative to the immediate prior version 
of the specification of record. An accompanying clean version (without 
markings) must also be supplied. Numbering the paragraphs of the 
specification of record is not considered a change that must be shown 
pursuant to this paragraph.
* * * * *
    17. Section 1.823 is proposed to be amended by revising paragraph 
(a)(1) to read as follows:


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

    (a)(1) If the ``Sequence Listing'' required by Sec.  1.821(c) is 
submitted on paper: The ``Sequence Listing,'' setting forth the 
nucleotide and/or amino acid sequence and associated information in 
accordance with paragraph (b) of this section, must begin on a new page 
and must be titled ``Sequence Listing.'' The pages of the ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' shall contain no more than 66 lines and each line shall 
contain no more than 72 characters. The sheet or sheets presenting a 
sequence listing may not include other parts of the application. A 
fixed-width font should be used exclusively throughout the ``Sequence 
Listing.''
* * * * *

    Dated: March 19, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and, Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-6972 Filed 3-24-03; 8:45 am]
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