[Federal Register Volume 68, Number 177 (Friday, September 12, 2003)]
[Proposed Rules]
[Pages 53816-53859]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-23010]



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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1 and 5



Changes To Support Implementation of the United States Patent and 
Trademark Office 21st Century Strategic Plan; Proposed Rule

  Federal Register / Vol. 68, No. 177 / Friday, September 12, 2003 / 
Proposed Rules  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 5

[Docket No.: 2003-P-020]
RIN 0651-AB64


Changes To Support Implementation of the United States Patent and 
Trademark Office 21st Century Strategic Plan

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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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. The Office is 
proposing to revise the rules of practice to support the implementation 
of the 21st Century Strategic Plan, which involves improving the patent 
application and examination process by promoting quality enhancement, 
reducing patent pendency, and using information technology to simplify 
the patent application process. The more notable changes being proposed 
in this document involve permitting electronic signatures on a number 
of submissions, streamlining the requirements for incorporation by 
reference of prior-filed applications, and clarifying the 
qualifications for claiming small entity status for purposes of paying 
reduced patent fees. These changes to the patent application and 
examination process are necessary for the Office to be able to process 
the long-term trend of increasing numbers of applications within a 
reasonable time frame.

COMMENT DEADLINE DATE: To be ensured of consideration, written comments 
must be received on or before November 12, 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: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450 or by facsimile to (703) 305-1013, marked to the attention of 
Hiram Bernstein. Although comments may be submitted by mail or 
facsimile, the Office prefers to receive comments via the Internet.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, located at Room 3-C23 of Crystal Plaza 
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: Hiram H. Bernstein, Senior Legal 
Advisor, by telephone at (703) 305-8713 or Robert J. Spar, Director, 
Office of Patent Legal Administration (OPLA), at (703) 308-5107, or by 
facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein, 
or by mail addressed to: Mail Stop Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office has conducted a ``top to bottom'' 
review of the patent application and examination process (among other 
processes) as part of the 21st Century Strategic Plan. The 21st Century 
Strategic Plan is available on the Office's Internet Web site 
(www.uspto.gov). While many of the changes to the patent application 
and examination process necessary to support the 21st Century Strategic 
Plan require enabling legislation (and implementing rule changes), the 
Office has determined that a number of initiatives can be implemented 
under the Office's current rule making and patent examination authority 
set forth in 35 U.S.C. 2(b)(2), 131, and 132. This document proposes 
changes to the rules of practice in title 37 of the Code of Federal 
Regulations (CFR) to improve the patent application and examination 
process by promoting quality enhancement, reducing patent pendency, and 
using information technology to simplify the patent application 
process.
    This document specifically proposes changes to the following 
sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.14, 1.17, 1.19, 1.27, 
1.47, 1.52, 1.53, 1.55, 1.58, 1.59, 1.69, 1.76, 1.78, 1.83, 1.84, 1.91, 
1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.116, 1.131, 1.136, 
1.137, 1.165, 1.173, 1.175, 1.178, 1.182, 1.183, 1.213, 1.215, 1.291, 
1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.502, 1.530, 1.550, 1.570, 
1.644, 1.666, 1.704, 1.705, 1.741, 1.902, 1.953, 1.956, 1.957, 1.958, 
1.979, 1.997, 5.12, 5.15, and 5.25. Additionally, this document 
proposes to amend title 37 CFR by adding new Sec.  1.57 and removing 
Sec.  1.179.
    The following members of the Office of Patent Legal Administration 
may be contacted directly for the matters indicated:

Joni Chang ((703) 308-3858): Sec. Sec.  1.8, 1.10, 1.98, 1.111, and 
1.311
Jeanne Clark ((703) 306-5603): Sec.  1.98
James Engel ((703) 308-5106): Sec. Sec.  1.14, 1.17, 1.53, 1.59, 1.103, 
1.131, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741, 
5.12, 5.15, and 5.25
Karin Ferriter ((703) 306-3159): Sec. Sec.  1.6, 1.47, 1.52 (other than 
(e)(1)(iii) and (e)(3)), 1.58, 1.83, 1.84, and 1.165
Anton Fetting ((703) 305-8449): Sec. Sec.  1.17, 1.53, 1.59, 1.103, 
1.105, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741, 
5.12, 5.15, and 5.25
Kery Fries ((703) 308-0687): Sec. Sec.  1.76, 1.704, and 1.705
Hiram Bernstein ((703) 305-8713): Sec. Sec.  1.91 and 1.94
Eugenia Jones ((703) 306-5586): Sec. Sec.  1.8, 1.10, 1.27, 1.55, 
1.57(a), and 1.78
Michael Lewis ((703)306-5585): Sec. Sec.  1.4, 1.19, 1.52(e)(1)(iii) 
and (e)(3), 1.57, and 1.58(b)
Joe Narcavage ((703) 305-1795): Sec. Sec.  1.173, 1.175, 1.178, 1.179, 
1.291, and 1.324
Mark Polutta ((703) 308-8122): Sec. Sec.  1.213, and 1.215
Kenneth Schor ((703) 308-6710): Sec. Sec.  1.98, 1.116, 1.136, 1.137, 
1.291, 1.502, 1.550, 1.570, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979, 
and 1.997
Fred Silverberg ((703) 305-8986): Sec.  1.115

The Office will post a copy of this notice on its Internet Web site 
(www.uspto.gov). Additionally, individuals or organizations, that need 
a copy for the purpose of providing comments, may send a request by 
phone or e-mail to Elizabeth Polley at ((703) 308-6202, or 
[email protected]) or Terry Dey at ((703) 308-1201 or 
[email protected]) to receive an e-mail copy of the notice. When 
making a request for an e-mail copy, it is requested that persons 
please specify whether they wish to receive the document in MS-Word, 
WordPerfect, or HTML format.

Discussion of Specific Rules

    Section 1.4: Section 1.4(d) is proposed to be amended to provide 
for filing correspondence with electronic signatures on electronically 
created correspondence documents that are filed by facsimile 
transmission, or hand-carried or mailed to the Office, for entry in a 
patent application, patent file, or

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reexamination proceeding. The electronic signature must be the signer's 
actual name or have the actual name additionally presented in printed 
or typed form. The electronic signature may be any combination of 
numbers and/or letters and may include a title. Appropriate punctuation 
and spaces may be used with the letters and numbers. The signer must 
present his or her family name entirely in capital letters in the 
signature if the actual name is used. Where the actual name is not used 
in the signature, the family name must be presented entirely in capital 
letters in the printed or typed form of the name. When the actual name 
of the signer is being provided as a printed or typed name, it must be 
clearly identified as the actual name of the signer. A practitioner 
signing pursuant to Sec. Sec.  1.33(b)(1) or 1.33(b)(2) must place the 
signer's registration number, either within or after the electronic 
signature. A number character () may only be used in a 
signature if it is prior to a practitioner's registration number that 
is part of the electronic signature. New paragraph (h) sets forth the 
procedure for resolving questions as to the veracity of the 
(electronic) signature, such as when there are variations in 
signatures, or where the signature and the printed or typed name does 
not clearly identify the person signing the document, or where more 
than one person has used the same signature.
    The Office considered proposing a requirement that the order of the 
name in a signature be identified with the language such as follows: 
given name, middle name or initial, family name if the name is supplied 
in that order. Capitalizing only the family name without identifying 
the order is considered a simpler and less burdensome procedure for 
signing a document. Comments in favor of or opposed to this alternative 
are invited.
    Section 1.4(d)(1)(iv)(A) sets forth the specific requirements of an 
electronic signature (e-signature), and when the Office will accept an 
electronic signature in patent-related documents. The phrase 
``electronically signed'' documents includes documents that are created 
and signed in a word processor program and electronically fillable 
forms, such as declarations generated using the program Adobe Acrobat 
that have pre-printed standard language with an ability to add specific 
information such as a signature (e.g., similar to those provided on the 
Office's Internet Web site that can be completed and signed 
electronically). The proposed rule change is intended to facilitate 
movement of documents between practitioners, applicants, and the 
Office. The proposed rule change does not permit the filing of Official 
correspondence by electronic mail (e.g., e-mail) messages over the 
Internet to the Office, but does permit submissions transmitted by 
facsimile. Pilot programs, such as the program at the Board of Patent 
Appeals and Interferences (BPAI) are not affected by this rule change 
(see standing orders at the URL: http://www.uspto.gov/web/offices/dcom/bpai/standing2003May.pdf). Electronically created documents that 
contain an electronic signature e-mailed from applicants to a 
practitioner, however, may be transmitted to the Office from a 
practitioner by facsimile transfer, or as a paper document. While it is 
not now permitted, the Office is considering expanding the means by 
which electronically created documents can be transmitted to the 
Office, such as by an e-mail attachment using the proposed signature 
requirements.
    Paragraph 1.4(d)(1)(iv)(A) recites that electronic signatures may 
be utilized when the electronically signed document is: (1) Facsimile 
transmitted from a computer in its electronic form; (2) printed and 
then facsimile transmitted; or (3) printed on paper and hand or mail 
delivered to the Office. This paragraph also permits electronic 
signatures for documents submitted via the Office's Electronic Filing 
System (EFS). The EFS is not an e-mail system. This paragraph does not 
authorize delivery of documents to the Office by e-mail over the 
Internet.
    Practitioners must take care when submitting a document intended to 
be unsigned by ensuring that there are no markings in a signature space 
or this could be determined to be indicia of a signature (either as a 
permanent ink signature or electronic signature).
    The documents submitted under this provision may become records 
submitted in interference and other legal proceedings where 
authentication is required. Applicants and practitioners must recognize 
the differences in electronically created documents and paper documents 
for authentication purposes and take appropriate steps to be able to 
authenticate documents, if required. An issue with electronically 
created documents is that they may have embedded comments and track 
changes in the electronic document that are not always visible when a 
document is rendered using a different computer system or a different 
software version, or when printed to paper. Variations in how much of 
the embedded comments and track changes are rendered on a given 
computer may cause the document signer to see different document 
content than the contents of the document that is submitted to the 
Office. Additionally, establishing a chain of custody may involve 
proving that a document viewed by the Office is, in fact, the same 
document executed by the signer.
    The Office can only authenticate a document to the extent of what 
is contained in Office records. Office records will not contain any of 
the electronic communications between the applicant or practitioner 
filing a document and a third party. For example, the Office cannot 
authenticate from its records a document (e.g., a Sec.  1.132 
affidavit) prepared by a third party and including a third party 
signature that was submitted to an applicant or practitioner 
electronically for resubmission to the Office. Under these 
circumstances, the applicant or practitioner would need to be concerned 
about both establishing a chain of custody to address alteration and 
any attempted repudiation by a third party of his or her electronic 
signature. In establishing the authenticity of a document, the 
applicant or practitioner would be attempting to show that the date of 
execution of the document is earlier than the date of submission to the 
Office, and the document was unaltered from that earlier date until its 
submission to the Office. A chain of custody would need to be shown and 
proven. Therefore, electronically created documents may require 
additional procedures over what may be required for a document signed 
with an ink signature to address chain of custody and alteration 
issues. In addition, there must be procedures in place to address the 
issue that the particular document preparation software may have 
undergone frequent changes. Different versions of the same software 
program may store and display the document, as well as comments and 
changes to the document, differently, which gives rise to issues 
concerning alteration of the document. Accordingly, applicants and 
practitioners must be cognizant of these issues of changed document 
appearance and content and take appropriate steps to ensure that their 
records, if in electronic form, can be rendered and authenticated at 
some later time as being the unaltered electronically signed original 
document.
    Paragraph 1.4(d)(1)(iv)(A) defines who can insert an electronic 
signature into an electronically created document. The proposed rule 
change requires that the signer ``personally insert'' his or her 
electronic signature by use of numbers and/or letters, with punctuation 
and spaces. To make the identity of the signer self-evident, the same 
electronic

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signature should be utilized each time, with variations of the 
signature being avoided. The signer should review any indicia of 
identity of the signer in the body of the document including any 
printed or typed name and registration number, to ensure that the 
indicia of identity is consistent with how the document is signed. 
Knowingly adopting an electronic signature of another is not permitted. 
The ``personally insert'' requirement is met by the signer directly 
typing his or her electronic signature on a keyboard. This requirement 
is not met when a first person types the electronic signature of a 
second person, upon receiving only a general instruction from the 
second person to insert the second person's signature. A person 
physically unable to use a keyboard, however, may, while simultaneously 
reviewing the document for signature, direct another person to press 
the appropriate keys to form the signature.
    Paragraph 1.4(d)(1)(iv)(A) defines the content of an electronic 
signature. The Office proposes to adopt a standard of numbers and/or 
letters, with punctuation and spaces as the electronic signature, which 
must be placed between two forward slashes to be consistent with the 
international standard and to build upon the experience gained with 
this standard in the Trademarks section of the office. See PCT Annex F, 
section 3.3.2. The electronic signature between two forward slashes 
cannot contain any additional forward slashes. This standard can be met 
with any standard personal computer (PC) and keyboard. The Office also 
recognizes that many practitioners sign their name with the number 
character () as part of his or her registration number. The 
use of the number character () as part of the registration 
number would be permitted but not otherwise, such as utilization of a 
customer number as the signature. Other non-text characters would not 
be permitted, as a typed symbol in one font may vary when viewed in a 
different font (e.g., the code for the euro currency symbol in one font 
produces a different currency symbol when viewed in another font).
    The Office recognizes that periods, commas, and hyphens are often 
found in names and will therefore be found in many signatures. 
Appropriate punctuation and spaces may be used with numbers and 
letters, not in place of numbers and letters in a signature. Hence, the 
use of appropriate punctuation and spaces with letters and numbers 
would be permitted (e.g., periods, commas and hyphens). A signature of 
only punctuation marks ordinarily does not identify any person, and 
would be improper. Also, punctuation marks, such as question marks 
(e.g., /???/), are often utilized to represent the intent not to sign a 
document and would be improper.
    To avoid processing delays, the Office needs to readily determine 
whether a document has been signed. The filing of a document does not 
imply that the document has been signed. The Office does not want to 
investigate as to whether a mark (e.g., extraneous marks or a non-
permanent ink presentation of a name) comprises a signature. Therefore, 
the Office will only interpret the data presented between forward 
slashes as an electronic signature. Hence, documents intended to be 
unsigned should be very clear that any data presented between forward 
slashes is not intended to be a signature.
    Similarly, presentation of just numbers and letters in an 
electronically produced document without forward slashes will be 
treated under this part as an unsigned document. Script fonts are not 
permitted for any portion of a document, which would include a name 
typed in a signature area. See Sec.  1.52(b)(2)(ii). Accordingly, 
presentation of a typed name without the required slashes even in a 
script font does not present the proper indicia manifesting an intent 
to sign and will not be accepted as an electronic signature.
    Paragraph (d)(1)(iv)(A) requires the signer's actual name be used 
except as provided in paragraph (d)(1)(iv)(B), where an electronic 
signature is used that differs from the actual name of the signer. 
Where an electronic signature is not the signer's actual name, the 
actual name must be printed or typed and clearly indicated as the 
signer's actual name. The use of lower case and capital letters is 
permitted except that the family name must be entirely capitalized with 
no other names entirely capitalized. A middle initial if capitalized 
and presented with a period to identify it as an abbreviation is 
permitted. A person with an electronic signature that includes both a 
single character family name and at least one other single character 
name must provide an electronic signature with all single character 
names other than the family name in non-capital letters. Titles may be 
used with the signer's name and can be placed within or after the slash 
marks. When the last name is given first it will be presumed to be 
followed by a first name before any middle name. Similarly, when a last 
name is given last it will be presumed that the first name will precede 
a middle name. Where two or more multiple character names are 
capitalized, the Office will need to inquire as to which is the last 
name.
    To accommodate as many varieties of names as possible a signer may 
select any combination of letters and/or numbers for his or her 
signature under Sec.  1.4(d)(1)(iv)(A). A signature that is the actual 
name of the signer need not be accompanied by a typed or printed name. 
Accordingly, the absence of a printed or typed name clearly identified 
as the actual name of the signer is a representation that the signature 
is the signer's actual name.
    The Office considered accepting an actual name as a signature 
without requiring that the order of names be identified. A signature of 
an actual name has been found by the Office insufficient to identify 
the signer. For example, some people routinely sign with his or her 
last (or family) name first. Similarly, for people with first and last 
names that are commonly interchanged as first and last names, it may 
not be self-evident which is the given name and which is the family 
name. A printed or typed copy of the signer's name immediately below 
the signature often will have the same problem of which is the family 
name and which is the given name.
    The Office considered proposing a standard signature format such as 
family name first, followed by given name. A standard signature format 
was rejected because it would not aid the Office in identifying the 
signer of a document, particularly where the format is not adhered to 
by the signer. The Office is receiving applications and correspondence 
for other patent-related matters in which it cannot be determined who 
signed the document and/or what the actual name of the signer is 
because either the order of the family name and given name are unclear, 
or more than one signer has the same name. Adopting a standard 
signature format would not make it any easier for the Office to detect 
in many cases when the order of family name, given name, and middle 
name are in a non-standard order.
    In the following discussion, family name is intended to be 
synonymous with the terms ``surname'' or ``last name'' in the customary 
format for European-American names. Similarly, given name is intended 
to be synonymous with the term ``first name'' in the customary format 
for European-American names. Format and content of a signature are both 
critical because people from different countries throughout the world 
have different customs for signing a name, e.g., reversing the order of 
family (i.e., last)

[[Page 53819]]

name and given (i.e., first) name. Current rules and procedures for 
most communications do not require applicants and practitioners to 
utilize any format for the signature. A person may currently use a 
signature with his or her family name as the first name or the last 
name of the signature. Further, it is common for a person to abbreviate 
his or her given name (e.g., William Jefferson Louis, as W. Jefferson 
Louis), which, if signed with the last name first, would appear as a 
middle initial (i.e., Louis W. Jefferson). The Office is receiving 
communications from people all over the world with different signature 
formats and the Office cannot readily identify the family name and 
given name of the signer.
    This lack of consistency in signing order is exacerbated in many 
patent applications because a person's name may appear in several 
places in the record of an application in a different format (e.g., 
first name and last name reversed) in each occurrence. In addition, the 
Office has found at least two applicants and/or practitioners in the 
same firm with the given and family names in reverse order (e.g., first 
practitioner is Mitchell Louis, and the second practitioner is Louis 
Mitchell). Signatures have been found with the printed or typed name 
under the signature appearing as the reverse of the signature (e.g., /
Louis Mitchell/ with Mitchell Louis typed immediately underneath). In 
view of the differing customs for the order of signing names, the 
Office is frequently unable to ascertain the identity of the signer 
(e.g., in the example given, is Louis Mitchell or Mitchell Louis the 
signer). The identity of the signer is not self-evident in applications 
with applicants and/or practitioners that have reversed versions of the 
same names, and when the order of names in a signature is the reverse 
order in the adjacent printed/typed version of the signer's name. This 
often results in confusion in the Office, and later in the public when 
reviewing Office records, as to the actual name and identity of the 
signer of a document or a patentee when an application is issued.
    To avoid confusion as to whether a registered practitioner is 
relying on his or her registration for signing a document, Sec.  
1.4(d)(1)(iv)(A) recites that a practitioner signing pursuant to 
Sec. Sec.  1.33(b)(1) or 1.33(b)(2) of this part must place his or her 
complete name, as registered, and his or her registration number, with 
or immediately adjacent his or her electronic signature. A number 
character () may only be used in a signature if it is prior to 
a practitioner's registration number that is part of the electronic 
signature. When a practitioner is signing as an assignee, or as an 
applicant (inventor) pursuant to Sec. Sec.  1.33(b)(3) or 1.33(b)(4), a 
registration number is not required but may be supplied.
    The requirement that an electronic signature for practitioners be 
accompanied by an identification of the family name, and registration 
number, is consistent with Article 9(1) of the Patent Law Treaty (June 
1, 2000) (PLT).
    Paragraph 1.4(d)(1)(iv)(B) recites the requirements for when a 
signer uses an electronic signature that is not the person's actual 
name. The Office expects that where persons do not sign with their 
actual name it is because they are using an e-signature that is the 
normal e-signature for that person and not something that is employed 
to obfuscate or misidentify the signer. Where the e-signature is not 
the actual name because the signer is using the signer's normal e-
signature, the actual name must be presented in printed or typed form 
with the last name in capitals. The printed or typed name must be 
clearly identified as the actual name. To accommodate as many 
signatures as possible, a signer may select any combination of letters 
and/or numbers for his or her signature. The flexibility in selecting 
combinations of letters and/or numbers for signatures means that the 
identity of the signer may not be clear from the signature if it is not 
an actual name. For example, a collection of letters/numbers when 
presented for the first time without a full printed or typed name that 
does not appear to be a person's name (e.g., /123456XYZ/) does not 
identify any person as the signer. This is so even where the signer has 
submitted a previous document with such signature and an additional 
identification of the actual name of the signer. Similarly, where the 
signature, because it is not the signer's actual name, appears to 
represent an identifiable person with a name different in some respects 
from those persons authorized to sign and who are of record in an 
application, the name of the signer in the signature alone would not be 
sufficient to identify the signer.
    Paragraph 1.4(d)(1)(iv)(B) requires that where the signer's usual 
electronic signature is not the signer's actual name, the signer must 
provide his or her actual name by printing or typing the actual name 
and clearly identifying it as such. The signer must further identify in 
the printed or typed actual name the signer's family name by entirely 
capitalizing only the family name. These requirements are consistent 
with PLT Rule 9. Registered practitioners signing pursuant to 
Sec. Sec.  1.33(b)(1) or 1.33(b)(2) of this part, or where the signer 
otherwise (e.g., to distinguish two practitioners with the same name) 
includes a registration number when it is not required by rule, should 
provide the registration number after the signature, or the printed or 
typed name immediately below the signature.
    A typed or printed name in the body of the text is not usually 
self-identifying as to whether it is the signer's actual name, or even 
the name of some other person. A clear indication that it is the 
signer's actual name is necessary to distinguish it from the other 
possibilities where the signature is not the actual name and a printed 
or typed name has not been supplied with the signature. Similarly, the 
order of the names, family name, given name, middle name or initial, 
unless supplied is not self-evident from the printed or typed name 
alone so the order must be indicated by entirely capitalizing only the 
family name.
    The Office strongly suggests that each signer use a signature 
(electronic or otherwise) that has his or her full name including full 
middle name. The Office recommends that registered practitioners use 
their full name under which they are registered and always include 
their registration number with the signature or with the hand-written 
or typed name that accompanies a signature. Examples of proper and 
improper signatures will be posted on the Office's Internet Web site.
    Paragraph 1.4(h) proposes requiring a ratification or confirmation 
of a signature, such as where the Office has reasonable doubt as to the 
authenticity (veracity) of the signature. The Office may additionally 
inquire in regard to a signature simply to identify the signer and 
clarify the record where the identity of the signer is unclear. The 
inquiries concerning the authenticity (veracity) of a signature are 
consistent with PLT Article 8(4)(c) and Rules 7(4), 15(4), 16(6), 
17(6), and 18(4). An example of when ratification or confirmation of a 
signature may be required is when there are variations in a signature 
or whenever a name in an e-signature is not exactly the same as the 
name indicated as an inventor, or a practitioner of record. Hence, 
whatever signature is adopted by a signer, that signature should be 
consistently used on all documents. Also addressed is the treatment of 
variations in a signature when a printed or typed name accompanies the 
e-signature but the identity of the signer is unclear. In such cases, 
the Office may require ratification or confirmation of a signature. 
Ratification or confirmation alone does

[[Page 53820]]

not provide a means for changing the name of a signer. For example, 
when an inventor changes her/his name and the inventor desires to 
change her/his name in the application, such change must be accompanied 
by a petition under Sec.  1.182. See Manual of Patent Examining 
Procedure Sec.  605.04(c) (8th. ed. 2001) (Rev. 1, Feb. 2003) (MPEP).
    The Office is proposing to treat failure to follow the format and 
content of a standard signature as an unsigned document. Treating the 
documents as being unsigned could have varying results dependent on the 
nature of the document. For example, in new applications, treating an 
oath or declaration as an unsigned oath or declaration could result in 
the imposition of a surcharge. See Sec.  1.53(f)(1). Other 
correspondence could be treated under the procedures for unsigned 
amendment documents set forth in MPEP Sec. Sec.  714.01 and 714.01(a).
    As previously indicated, the Office is requesting comments on the 
alternative of requiring labeling the order of names in a signature in 
place of the proposed rule requiring capitalization of the entire 
family name.
    Section 1.6: Section 1.6(d)(4) is proposed to be amended to provide 
that black and white drawings in patent applications may be transmitted 
to the Office by facsimile in order to provide more flexibility to 
applicants for filing individual papers in applications that contain 
drawings. Drawings are now permitted to be transmitted to the Office by 
facsimile when accompanied by payment of the issue fee, and drawings 
received by facsimile have been of an acceptable quality. See Payment 
of the Issue Fee and Filing Related Correspondence by Facsimile, 1254 
Off. Gaz. Pat. Office 91 (Jan. 15, 2002). Although the rules of 
practice will now permit the submission of black and white drawings by 
facsimile, photographs or drawings with detail should not be 
transmitted by facsimile. Furthermore, color drawings must continue to 
be hand-carried or mailed to the Office instead of being transmitted by 
facsimile. In addition, the Office will publish drawings that are 
received as long as they can be scanned, and will not, in general 
require replacement drawings to replace drawings transmitted by 
facsimile, even if the facsimile transmission process results in the 
drawings being less sharp than the original drawings.
    Section 1.6(e) is proposed to be removed and reserved because the 
provisions of Sec.  1.6(e) are deemed more appropriately placed in 
Sec.  1.10. This is because the ``Express Mail'' provisions of Sec.  
1.10 are the only means by which correspondence can be accorded a 
filing date other than the actual date of receipt in the Office. Thus, 
the provisions of Sec.  1.6(e) are proposed to be transferred to Sec.  
1.10 along with some changes. Proposed Sec.  1.10(g) and (h) 
specifically address situations in which ``Express Mail'' is returned 
or refused by the United States Postal Service (USPS). Proposed Sec.  
1.10(i) is similar to Sec.  1.6(e) and addresses situations where there 
is a designated interruption or emergency in ``Express Mail'' service.
    Section 1.8: Section 1.8(a) is proposed to be amended to clarify 
that the provisions of this section do not apply to time periods or 
situations set forth in sections that have been expressly excluded from 
Sec.  1.8 as well as situations enumerated in Sec.  1.8(a)(2).
    Section 1.8(b) is also proposed to be amended to permit notifying 
the Office of a previous mailing, or transmitting, of correspondence, 
when ``a reasonable amount of time has elapsed from the time of mailing 
or transmitting of the correspondence.''
    Section 1.8(b) is also proposed to be amended to make it clear that 
it is not the reexamination proceeding which is concluded under 
Sec. Sec.  1.550(d) or 1.957(b), but rather the prosecution of the 
reexamination. See the discussion as to the amendment of Sec.  1.550 
for the rationale for this change.
    It is further proposed that Sec.  1.8(b) be revised to more 
appropriately set forth the Sec.  1.957(c) consequences of a failure to 
respond in an inter partes reexamination.
    The proposed amendment to Sec.  1.8(a) is to clarify that the list 
enumerated in Sec.  1.8(a)(2) is not exhaustive. Provisions of Sec.  
1.8 also do not apply to the time periods or situations set forth in 
sections that have been explicitly excluded from Sec.  1.8. For 
example, provisions of Sec.  1.8(a) do not apply to time periods and 
situations set forth in Sec. Sec.  1.217(e) and 1.703(f) because the 
exceptions are provided explicitly in Sec.  1.217(e), ``[t]he 
provisions of Sec.  1.8 do not apply to the time periods set forth in 
this section'' and Sec.  1.703(f), ``[t]he date indicated on any 
certificate of mailing or transmission under Sec.  1.8 shall not be 
taken into account in [a patent term adjustment] calculation.''
    Recently, many applicants had experienced substantial delays in 
delivery of their correspondence by the USPS to the Office. These 
applicants did not wish to wait until the application is held to be 
abandoned before notifying the Office of the previous mailing, or 
transmitting, of the correspondence and supplying a duplicate copy of 
the correspondence and requisite statement in accordance with Sec.  
1.8(b)(3).
    Under the proposed amendment to Sec.  1.8(b), in the event that 
correspondence is considered timely filed by being mailed or 
transmitted in accordance with Sec.  1.8(a), but not received in the 
Office after a reasonable amount of time has elapsed (e.g., more than 
one month from the time the correspondence was mailed), the applicants 
would not be required to wait until the end of the maximum extendable 
period for reply set in a prior Office action (for the Office to hold 
the application to be abandoned) before informing the Office of the 
previous submitted correspondence and supplying a duplicate copy and 
requisite statement. Thus, filing a petition to withdraw the holding of 
abandonment would not be necessary in such circumstance. The proposed 
amendment to Sec.  1.8(b) would provide applicants an expedited 
procedure in resolving substantial delayed mail problems.
    Before notifying the Office of a previously submitted 
correspondence that is not received by the Office, applicants are 
encouraged to check the Patent Application Information Retrieval (PAIR) 
System (which can be accessed over the Office's Internet Web site at 
http://pair.uspto.gov) to see if the correspondence has been entered 
into the application file. The PAIR system is a system which enables 
applicants to access the Office's electronic records for a patent 
application or patent. Private PAIR is available to applicants who have 
a customer number associated with the correspondence address for an 
application and who have acquired the access software (Entrust Direct 
Software and a PKI certificate). Applicants may contact the Electronic 
Business Center (EBC) at (703) 305-3028 for more information on PAIR.
    The proposal that Sec.  1.8(b) be revised to more appropriately set 
forth the Sec.  1.957(c) consequences of a failure to respond in an 
inter partes reexamination is necessary to clarify that the inter 
partes reexamination prosecution is neither terminated nor concluded 
where the patent owner fails to timely respond to an Office action, and 
claims in the proceeding remain patentable. Rather, an Office action is 
issued to thereby permit the third party requester to challenge the 
claims found patentable. As set forth in Sec.  1.957(c), ``[i]f claims 
are found patentable and the patent owner fails to file a timely and 
appropriate response to any Office action in an inter partes 
reexamination proceeding, further prosecution will be limited to the 
claims found patentable at

[[Page 53821]]

the time of the failure to respond, and to any claims added thereafter 
which do not expand the scope of the claims which were found patentable 
at that time'' (emphasis added). The proposed revision accordingly 
would apply the Sec.  1.8(b) remedy to an inter partes reexamination 
prosecution which has been limited as to further prosecution under 
Sec.  1.957(c). In addition, the amendment is intended to apply to the 
Sec.  1.957(a) situation where the third party requester files an 
untimely comment, notice of appeal or brief in an inter partes 
reexamination, and the paper would thus be refused consideration (to 
thereby limit the requester's prosecution) if not for the operation of 
the Sec.  1.8(b) remedy.
    Section 1.10: Section 1.10 is proposed to be amended to add 
paragraphs (g), (h), and (i) to address the effects of interruptions or 
emergencies in USPS ``Express Mail'' service. For example, Friday, 
November 16, 2001, the USPS issued a memorandum temporarily and 
immediately suspending ``Express Mail'' service to Washington DC zip 
codes 202xx through 205xx. The suspension included service to the zip 
code for certain correspondence mailed to the Office (20231).
    Applicants frequently rely on the benefits under Sec.  1.10 to 
obtain a particular filing date for a new application. The filing date 
accorded to an application is often critical. For example, applicants 
who do not file their applications in the United States within one year 
from when their invention was first described in a printed publication 
or in public use or on sale in this country are not entitled to a 
patent. (See 35 U.S.C. 102(b)). Furthermore, to be able to claim the 
benefit of a provisional application or to claim priority to a foreign 
application, the nonprovisional application claiming benefit or 
priority must be filed within one year from the filing of the 
provisional application or foreign application, respectively. 
Therefore, the means by which applicants may remedy the effects of an 
interruption or emergency in USPS Express Mail service which has been 
so designated by the Director should be specifically addressed in the 
rules of practice.
    The Office published a notice on October 9, 2001, that provides 
guidance in the situations in which a post office refuses to accept the 
deposit of mail for delivery by ``Express Mail'' Service and situations 
in which ``Express Mail'' is deposited into an ``Express Mail'' drop 
box and given an incorrect ``date-in.'' See United States Postal 
Service Interruption and Emergency, 1251 Off. Gaz. Pat. Office 55 (Oct. 
9, 2001). The procedure for where the USPS refuses to accept the 
deposit of mail for delivery by ``Express Mail'' as contained in the 
notice, however, has not been incorporated into the rules of practice.
    The Offices's existing framework to address postal emergencies is 
detailed in Sec.  1.6(e), ``Interruptions in U.S. Postal Service.'' 
Section 1.6(e) provides that if interruptions or emergencies in the 
USPS which have been so designated by the Director occur, the Office 
will consider as filed on a particular date in the Office any 
correspondence which is: (1) Promptly filed after the ending of the 
interruption or emergency; and (2) accompanied by a statement 
indicating that the correspondence would have been filed on that 
particular date if it were not for the designated interruption or 
emergency in the USPS.
    The provisions of Sec.  1.6(e) are more appropriate in Sec.  1.10 
since ``Express Mail'' is the only means by which correspondence can be 
accorded a filing date other than the actual date of receipt in the 
Office. Thus, the provisions of Sec.  1.6(e) are proposed to be 
transferred to Sec.  1.10 along with some changes. Proposed Sec.  
1.10(g) and (h) specifically address situations in which ``Express 
Mail'' is returned or refused by the USPS. Proposed Sec.  1.10(i) is 
similar to Sec.  1.6(e) and addresses situations where there is a 
designated interruption or emergency in ``Express Mail'' service.
    Section Sec.  1.10(g) is proposed to be added to provide that any 
person who attempts to file correspondence by ``Express Mail'' that was 
returned by the USPS may petition the Director to consider the 
correspondence as filed on a particular date in the Office. The 
petition must be filed promptly after the person becomes aware of the 
return of the correspondence and the number of the ``Express Mail'' 
mailing label must have been placed on the paper(s) or fee(s) that 
constitute the correspondence prior to the original mailing by 
``Express Mail.'' The petition must also include the original 
correspondence or a copy of the original correspondence showing the 
number of the ``Express Mail'' mailing label thereon and a copy of the 
``Express Mail'' mailing label showing the ``date-in.'' Furthermore, 
the petition must include a statement, which establishes to the 
satisfaction of the Director, the original deposit of the 
correspondence and that the correspondence or the copy is the original 
correspondence or a true copy of the correspondence originally 
deposited with the USPS on the requested filing date.
    Section 1.10(h) is proposed to be added to provide that any person 
who attempts to file correspondence by ``Express Mail'' that was not 
accepted by the USPS may petition the Director to consider the 
correspondence as filed on a particular date in the Office. The 
petition must be filed promptly after the person becomes aware of the 
refusal of the correspondence and the number of the ``Express Mail'' 
mailing label must have been placed on the paper(s) or fee(s) that 
constitute the correspondence prior to the attempted mailing by 
``Express Mail.'' The petition must also include the original 
correspondence or a copy of the original correspondence showing the 
number of the ``Express Mail'' mailing label thereon. In addition, the 
petition must include a statement by the person who originally 
attempted to deposit the correspondence with the USPS which 
establishes, to the satisfaction of the Director, the original attempt 
to deposit the correspondence and that the correspondence or the copy 
is the original correspondence or a true copy of the correspondence 
originally attempted to be deposited with the USPS on the requested 
filing date.
    Section 1.10(i) is proposed to be added to provide that any person 
attempting to file correspondence by ``Express Mail'' who was unable to 
deposit the correspondence with the USPS due to an interruption or 
emergency in ``Express Mail'' service which has been so designated by 
the Director, may petition the Director to consider such correspondence 
as filed on a particular date in the Office. This material is proposed 
to be transferred from Sec.  1.6. The petition must be filed in a 
manner designated by the Director promptly after the person becomes 
aware of the designated interruption or emergency in ``Express Mail'' 
service. The petition must also include the original correspondence or 
a copy of the original correspondence, and a statement which 
establishes, to the satisfaction of the Director, that the 
correspondence would have been deposited with the USPS but for the 
designated interruption or emergency in ``Express Mail'' service, and 
that the correspondence or copy of the correspondence is the original 
correspondence or a true copy of the correspondence originally 
attempted to be deposited with the USPS on the requested filing date.
    Proposed Sec.  1.10(i) requires the Director to designate an 
interruption or emergency in ``Express Mail'' service. It is envisioned 
that in the notice designating the interruption or emergency the 
Director would provide guidance on the manner in which petitions under 
proposed Sec.  1.10(i) should be filed. This is similar to what 
occurred when ``Express Mail'' was

[[Page 53822]]

suspended in November of 2001, when applicants were advised that if the 
USPS refused to accept correspondence for delivery to the Office by 
``Express Mail'' they should mail the correspondence by registered or 
first class mail with a statement by the person who originally 
attempted to deposit the correspondence with the USPS by ``Express 
Mail.''
    Section 1.14: Section 1.14(h)(1) is proposed to be amended to refer 
to the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.17: Section 1.17 is proposed to be amended to adjust 
petition fees to more accurately reflect the Office's cost of treating 
petitions. The petitions whose fees are currently provided for in Sec.  
1.17(h) are outside the scope of the usual processing of patent 
applications provided for in 35 U.S.C. 41(a) and (b). The Office is 
directed by 35 U.S.C. 41(d) to set fees for services not set under 35 
U.S.C. 41(a) or (b) so as to recover the average costs of performing 
the processing or service.
    The Office has conducted an activity-based-accounting cost (ABC) 
analysis of the Office's cost of treating the various petitions 
enumerated under Sec.  1.17(h) based on current practices and staffing 
costs. The Office has determined that the petition fee set forth in 
Sec.  1.17(h) does not recover the Office's costs of treating petitions 
for a number of the types of petitions enumerated under Sec.  1.17(h). 
The Office has also determined that there is a significant difference 
in the Office's costs for treating the various types of petitions 
enumerated under Sec.  1.17(h). Therefore, the Office is proposing to 
separate the petitions enumerated under Sec.  1.17(h) into three 
groups, and to charge separate petition fees for each of these three 
groups of petitions, which petition fees will more accurately reflect 
the cost of treating petitions in these three groups.
    The first group of petitions will be covered by a new Sec.  
1.17(f), which will specify a petition fee of $400. The petitions in 
this group are: (1) Petitions under Sec.  1.53(e) to accord a filing 
date; (2) petitions under Sec.  1.57(a) to accord a filing date; (3) 
petitions under Sec.  1.182 for decision on a question not specifically 
provided for; (4) petitions under Sec.  1.183 to suspend the rules; (5) 
petitions under Sec.  1.378(e) for reconsideration of decision on 
petition refusing to accept delayed payment of maintenance fee in an 
expired patent; (6) petitions under Sec.  1.644(e) in an interference; 
(7) petitions under Sec.  1.644(f) for requesting reconsideration of a 
decision on petition in an interference; (8) petitions under Sec.  
1.666(b) for access to an interference settlement agreement; (9) 
petitions under Sec.  1.666(c) for late filing of an interference 
settlement agreement; and (10) petitions under Sec.  1.741(b) to accord 
a filing date to an application under Sec.  1.740 for extension of a 
patent term. Petitions in this first group require analysis of complex 
and unique factual situations and evidentiary showings. Often a 
petition in this group will involve an issue of first impression 
requiring review and approval of a course of action by senior Office 
officials.
    The second group of petitions will be covered by a new Sec.  
1.17(g), which will specify a petition fee of $200. The petitions in 
this group are: (1) Petitions under Sec.  1.12 for access to an 
assignment record; (2) petitions under Sec.  1.14 for access to an 
application; (3) petitions under Sec.  1.47 for filing by other than 
all the inventors or a person not the inventor; (4) petitions under 
Sec.  1.59 for expungement of information; (5) petitions under Sec.  
1.103(a) to suspend action in an application; (6) petitions under Sec.  
1.136(b) to review requests for extension of time when the provisions 
of section 1.136(a) are not available; (7) petitions under Sec.  
1.138(c) to expressly abandon an application to avoid publication; (8) 
petitions under Sec.  1.295 for review of refusal to publish a 
statutory invention registration; (9) petitions under Sec.  1.296 to 
withdraw a request for publication of a statutory invention 
registration filed on or after the date the notice of intent to publish 
issued; (10) petitions under Sec.  1.377 for review of decision 
refusing to accept and record payment of a maintenance fee filed prior 
to expiration of a patent; (11) petitions under Sec.  1.550(c) for 
patent owner requests for extension of time in ex parte reexamination 
proceedings; (12) petitions under Sec.  1.956 for patent owner requests 
for extension of time in inter partes reexamination proceedings; (13) 
petitions under Sec.  5.12 for expedited handling of a foreign filing 
license; (14) petitions under Sec.  5.15 for changing the scope of a 
license; and (15) petitions under Sec.  5.25 for a retroactive license. 
Petitions in this second group also require analysis of factual 
situations and evidentiary showings; however, the factual situations 
and evidentiary showings for this second group of petitions often fall 
into recognizable patterns. On occasion, however, a petition in this 
second group will involve an issue of first impression requiring review 
and approval of a course of action by senior Office officials.
    The third group of petitions will be covered by Sec.  1.17(h), 
which will continue to specify a petition fee of $130. The petitions in 
this group are: (1) Petitions under Sec.  1.19(h) to request documents 
in a form other than that provided in this part; (2) petitions under 
Sec.  1.84 for accepting color drawings or photographs; (3) petitions 
under Sec.  1.91 for entry of a model or exhibit; (4) petitions under 
Sec.  1.102(d) to make an application special; (5) Sec.  1.313 to 
withdraw an application from issue; and (6) petitions under Sec.  1.314 
to defer issuance of a patent. Petitions in this third group require 
review for compliance with the applicable procedural requirements, but 
do not often require analysis of varied factual situations or 
evidentiary showings.
    Section 1.17(i) is proposed to be amended to provide a processing 
fee so that replacement drawings submitted within the period set forth 
in Sec.  1.215(a) can be included in any patent application 
publication. This will replace the current requirement for a petition 
fee under Sec.  1.17(h) for the petition under Sec.  1.182 which is 
required for such replacement drawings to be accepted for inclusion in 
any patent application publication. See Drawings in Patent Application 
Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (Jan. 16, 
2001). See also a conforming amendment to Sec.  1.215(a).
    Sections 1.17(l) and (m) are proposed to be revised to make it 
clear that the reexamination proceeding is not terminated under 
Sec. Sec.  1.550(d) or 1.957(b), but rather the prosecution of the 
reexamination is concluded under Sec. Sec.  1.550(d) or 1.957(b). See 
the discussion below as to the amendment of Sec.  1.550 for the 
rationale for this change.
    Section 1.19: Section 1.19 is proposed to be amended to clarify 
that copies of documents may be provided in whole, or in part, in 
electronic image form at the Office's option. Additionally, Sec.  
1.19(b) is proposed to be amended to provide how copies of Image File 
Wrapper (IFW) contents are to be charged. Further, it is proposed to 
eliminate the seven-day requirement of Sec.  1.19(b)(1) for processing 
copy requests, and to eliminate the phrase ``that were submitted in 
electronic form on a physical media'' from Sec.  1.19(b)(3). Paragraphs 
(g) and (h) would be added to provide for supplying copies of unscanned 
documents and to provide for a petition to obtain copies of documents 
in a form other than provided for in the rules of practice.
    In view of the ever-increasing (paper) submissions, many of the 
Office official records need to be, and are going to be, stored and 
maintained in electronic form. As a result of the Office's

[[Page 53823]]

migration to electronic storage of documents, especially for voluminous 
documents, the Office proposes amending Sec.  1.19 to reflect that the 
Office may, at its option, provide copies of documents where the copy 
is in electronic form on compact disc. Requests for voluminous 
documents can be economically provided in an expedited time frame 
without degrading service to other users if copies are furnished on 
compact disc. Requests for documents in other forms that would impair 
service to other users would be decided on a case-by-case basis as 
provided in new Sec.  1.19(h).
    Section 1.19(b) is proposed to be amended in view of the current 
migration of Office records from paper file wrappers to their 
electronic image equivalent with the image file wrapper (IFW) system as 
the repository of official Office records. See USPTO Announces 
Prototype of Image Processing, 1265 Off. Gaz. Pat. Office 87 (Dec. 17, 
2002), and See Changes To Implement Electronic Maintenance of Official 
Patent Application Records, 68 FR 38611 (June 30, 2003). The instant 
proposed rule change clarifies how copies of IFW contents are to be 
charged, as the current rule would otherwise not provide a way for the 
public to obtain copies given the absence of a paper file wrapper for 
the Office to copy when IFW replaces the paper file wrapper as the 
source of copies.
    Sections 1.19(b)(1) and (2) are proposed to be amended to reflect 
the change to IFW from paper file wrappers. Currently when documents 
are submitted to the Office in paper or on compact disc, copies of a 
file wrapper and documents contained therein may be made from the 
original paper or compact disc submission. If a scanned image is used 
to make copies of an application as originally filed, the scanned image 
corresponds to a paper file wrapper. In the future, there will be no 
paper file wrapper corresponding to scanned image files in the IFW 
System. As the Office uploads its records to the IFW system, the 
instant proposed change will permit the Office to supply to the public 
copies of Office documents directly from the IFW system regardless of 
format and media of the initial submission (e.g., paper, electronic, or 
compact disc). After uploading into IFW, the original submission may 
not be retained or be in an easily retrievable form for copying.
    The existing Sec. Sec.  1.19(b)(1) and (2) do not provide for 
supplying copies of the non-paper portion of a file wrapper (e.g., 
compact discs). Under the current practice, for example, copies of 
compact discs associated with a file wrapper must be ordered under 
existing Sec.  1.19(b)(3) and are not provided with an order under 
existing Sec. Sec.  1.19(b)(1) or 1.19(b)(2). Nothing in these proposed 
rule changes will change this practice. Similarly, any materials not in 
the IFW portion of a file wrapper (e.g., blueprints, microfiche, and 
video cassettes) are not included in these current sections or as 
proposed to be amended. To the extent, however, that documents may be 
uploaded from compact discs to be part of an IFW, those documents will 
be included with the IFW copy. In the event the Office cannot fill an 
order solely from the IFW, and must complete an order in part by 
copying paper files or compact discs, the fees of Sec.  1.19(b)(2)(i) 
for pages over 400 will apply to any copies made from paper files, 
except those provided for under Sec.  1.19(g) (e.g., blueprints), in 
which case the fee of Sec.  1.19(g) will apply, and the fee for compact 
disc copies under Sec.  1.19(b)(3) will apply to the copies of compact 
discs.
    Patent applications and patents will normally reference any compact 
discs that are a part of the application specification. The public 
should therefore review the specification to determine if an order for 
compact discs should be included with an order to obtain the contents 
of an application or file wrapper. Other materials associated with a 
file wrapper (e.g., blueprints, video cassettes, compact discs exhibits 
not part of the specification) are not referenced in the specification 
of an application or patent. The Office does not maintain an index of 
other materials associated with any specific file wrapper.
    Accordingly, the public should carefully review the contents of a 
file wrapper to determine if other materials associated with a file 
wrapper need to be separately ordered.
    Customers will not be able to select the source for documents under 
Sec. Sec.  1.19(b)(1) and (2) for filling an order.
    The Office's experience with providing copies from an image system 
is that it is faster than providing copies from paper and it allows the 
Office to provide copies for regular orders with the same speed as 
expedited service. The service is also cheaper for the public so that 
excess page fees can be eliminated in most cases. The Office is 
considering charging a single fee for copies made from the IFW to 
recover an average cost and limiting the additional fee of Sec.  
1.19(b)(2)(ii) to paper copy non-IFW documents rather than actual cost 
depending on size, if public comment is favorable. The Office believes 
public comment should be favorable because it will result in lower 
overall costs to the public and faster service. Lowered costs to the 
public and the Office occur because there will not need to be separate 
analysis and billing of the number of pages and excess pages copied. 
Faster service will occur because the Office will not have to delay 
orders while additional charges for excess pages are processed. Also, 
since the Office can provide the copies within a short period of time 
which would be faster than a seven-day service, at the same fee, it is 
proposed to remove the references to the slower non-expedited service, 
i.e., ``seven-day.''
    Section 1.19(b)(3) is proposed to be amended by revising ``on 
compact disc'' to ``in electronic form on a physical media'' so that 
documents submitted on electronic forms other than compact discs may be 
made available on compact disc for the same fee as documents submitted 
on compact disc.
    Section 1.19(g) is proposed to be added to provide for copying 
material that is not image scanned. Materials such as large blueprints, 
microfiche, and video cassettes cannot be scanned as electronic image 
equivalents, and an average cost for pricing cannot be computed in 
advance, because the demand for such copies is so infrequent. The 
Office proposes to charge the actual cost of copying of these 
materials.
    Section 1.19(h) is proposed to provide for a mechanism for 
requesting copies of documents in a form other than that normally 
provided by the Office. The copies would be provided at cost. For 
example, a copy of an application so voluminous that it required many 
boxes of compact discs might be requested under this part on some other 
media such as DVD media instead of compact discs. Petitions would be 
decided under this section based upon the ability of the Office to 
provide the requested service and the adverse impact to the Office and 
the public from diverting resources to fulfilling the order.
    Section 1.27: Section 1.27 is proposed to be amended to make 
certain clarifying changes. The proposed changes would clarify that: 
(1) A security interest held by a large entity would not be a 
sufficient interest to bar entitlement to small entity status; (2) the 
requirements for small business concerns regarding transfer of rights 
and the size standards of the Small Business Administration are 
additive; and (3) business concerns are not precluded from claiming 
small entity status merely because they are located in or operate 
primarily in a foreign country.
    Section 1.27 is proposed to be amended to revise paragraphs (a)(1), 
(a)(2)(i), and (a)(3)(i) to change ``obligation'' to ``currently 
enforceable

[[Page 53824]]

obligation.'' Questions have arisen as to whether a security interest 
in an application or patent held by a large entity is a sufficient 
interest to prohibit claiming small entity status. For example, an 
applicant or patentee may take out a loan from a banking institution 
and the loan may be secured with rights in a patent application or 
patent of the applicant or patentee, respectively. The granting of such 
a security interest to the banking institution is not a currently 
enforceable obligation to assign, grant, convey, or license any rights 
in the invention to the banking institution. Only if the loan is 
defaulted upon will the security interest cause a transfer of rights in 
the application or patent to the banking institution. Thus, where the 
banking institution is a large entity, the applicant or patentee would 
not be prohibited from claiming small entity status merely because the 
banking institution has been granted a security interest, but if the 
loan is defaulted upon, there would be a loss of entitlement to small 
entity status. Pursuant to Sec.  1.27(g), notification of the loss of 
entitlement would need to be filed in the application or patent prior 
to paying, or at the time of paying, the earliest of the issue fee or 
any maintenance fee due after the date on which small entity status is 
no longer appropriate. The proposed change to paragraphs (a)(1), 
(a)(2)(i), and (a)(3)(i) is intended to clarify that the obligation to 
assign, grant, convey, or license any rights in the invention must be a 
currently enforceable obligation and thus a security interest in an 
application or patent held by a large entity would not be a sufficient 
interest to bar entitlement to small entity status. The proposed change 
would not result in any change to the standards for determining 
entitlement to small entity status.
    A few additional examples will further clarify when small entity 
status is or is not appropriate.

     Example 1: On January 2, 2002, an application is filed with a 
written assertion of small entity status and the small entity filing 
fee is paid. Applicant is entitled to claim small entity status when 
the application is filed. Thereafter, the application is allowed and 
the small entity issue fee is timely paid on October 1, 2002. On 
October 2, 2002, applicant signs a license agreement licensing 
rights in the invention to a large entity. On October 1, 2002, 
applicant had not transferred any rights in the invention, and was 
under no obligation to transfer any rights in the invention, to any 
other party who would not qualify for small entity status. The 
payment of the small entity issue fee would be proper as long as the 
applicant was under no obligation on October 1, 2002, to sign the 
license agreement with the large entity.
     Example 2: An applicant, who would otherwise qualify for small 
entity status, executes an agreement with a large entity. The 
agreement requires the applicant to assign a patent application to 
the large entity sixty days after the application is filed. 
Thereafter, the application is filed. Since the applicant is under 
an existing obligation to assign the application to a large entity, 
applicant would not be entitled to claim small entity status. 
Applicant would need to pay the large entity filing fee even though 
the actual assignment of the application to the large entity may not 
occur until after the date of payment of the filing fee.

    Furthermore, Sec.  1.27 is proposed to be amended to change the 
period at the end of paragraph (a)(2)(i) to ``; and'' to clarify that 
paragraphs (a)(2)(i) and (a)(2)(ii) are additive requirements and a 
party seeking to qualify as a small business must meet both 
requirements as to transfer of rights and Small Business Administration 
requirements.
    Section 1.27(a)(2)(ii) is proposed to be amended to change 
``[m]eets the standards set forth in 13 CFR part 121'' to ``[m]eets the 
size standards set forth in 13 CFR 121.801 through 121.805 to be 
eligible for reduced patent fees.''
    Questions have also arisen as to whether a small business concern 
must have a place of business located in the United States, and operate 
primarily within the United States or make a significant contribution 
to the United States economy through the payment of taxes or use of 
American products, materials or labor (13 CFR 121.105) to be eligible 
to pay reduced patent fees under 35 U.S.C. 41(h). When the provisions 
of 35 U.S.C. 41(h) (Public Law 97-247, 96 Stat. 317 (1982)) were 
implemented in 1982, a suggestion that foreign concerns not be eligible 
to pay reduced patent fees under 35 U.S.C. 41(h) was considered and 
rejected because excluding foreign concerns would violate United States 
treaties in the patent area. See Definition of Small Business for 
Paying Reduced Patent Fees Under Title 35, United States Code, 47 FR 
43272 (Sept. 30, 1982), 1023 Off. Gaz. Pat. Office 27 (Oct. 19, 1982) 
(final rule). Specifically, a provision that foreign concerns are not 
eligible to pay reduced patent fees under 35 U.S.C. 41(h) would violate 
Article 2 of the Paris Convention for the Protection of Industrial 
Property, which provides that nationals of any Paris Convention country 
shall, as regards the protection of industrial property, enjoy in all 
the other Paris Convention countries the advantages that their 
respective laws grant to nationals of that country. Therefore, a 
business concern which meets the small business requirements set forth 
in 13 CFR 121.801 through 121.805 and complies with applicable Office 
procedures is and continues to be eligible to pay reduced patent fees 
under 35 U.S.C. 41(h), even if the business concern is located in or 
operates primarily in a foreign country.
    Section 1.47: Section 1.47(a) and (b) are proposed to be amended to 
refer to the petition fee set forth in Sec.  1.17(g) for consistency 
with the change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.52: Section 1.52, paragraphs (b)(1)(ii), (b)(2)(ii), 
(d)(1) and (e), are proposed to be amended.
    Section 1.52, paragraphs (b)(1)(ii) and (d)(1) are proposed to be 
amended to require that the statement that the translation is accurate 
be signed by the individual who made the translation. The Office has 
received a number of inquiries as to who may sign the statement, and 
has decided that it is appropriate to include the requirement that the 
signature required is that of the translator into the rules of 
practice. See also the proposed amendments to Sec. Sec.  1.55(a)(4), 
1.69(b) and 1.78(a)(5)(iv). The requirement that the person who made 
the translation sign the statement that the translation is accurate is 
consistent with current Sec.  3.26. Currently, anyone, including 
practitioners, who would have sufficient knowledge concerning the 
accuracy of the translation to comply with the averments of Sec. Sec.  
1.4(d)(2) and 10.18 may sign the accuracy statement regarding the 
translation. As a result, translations are being received by the Office 
accompanied by statements signed by practitioners stating that the 
translations are believed to be accurate ``based on information and 
belief.'' Such type of qualification by a party unrelated and several 
parties removed from the one doing the translation does not lend itself 
to confidence by the Office that care has been taken with the 
translation. Accordingly, the Office believes it to be appropriate to 
require the party doing the actual translation to make the statement of 
accuracy, particularly to ensure that the translator is covered by 
Sec. Sec.  1.4(d)(2) and 10.18.
    Section 1.52(b)(2)(ii) is proposed to be revised to recommend that 
the font size of text be at least a font size of 12, which is 
approximately 0.166 inches or 0.422 cm. high. Section 1.52(b)(2)(ii) 
currently requires that the text be in a lettering style that is at 
least 0.08 inches high, which is the font size set forth in Patent 
Cooperation Treaty (PCT) Rule 11.9. A font size of only 0.08 inches 
leads to difficulty in capturing text with optical character 
recognition technology and may not be reproducible as required by Sec.  
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A

[[Page 53825]]

font size of 12 (0.422 cm. or 0.166 inch high) is significantly more 
reproducible. Accordingly, Sec.  1.52(b)(2)(ii) is proposed to be 
amended to indicate a preference for a larger font size. See Sec.  
1.58(c) for a similar change.
    Further, Sec.  1.52 is proposed to be amended to allow greater 
flexibility in filing tables on compact disc, so that compact disc 
files may be used instead of paper where the total number of pages 
collectively occupied by all the tables in an application exceeds 100. 
Also, Sec.  1.52 is proposed to be clarified to be consistent with 
tables submitted on paper as to what constitutes a page. Section 1.52 
is proposed to be amended to recite that CD-R discs should be finalized 
so that they are closed to further writing.
    Section 1.52(e)(1)(iii) is proposed to be amended to allow tables 
of any size on compact disc if the total number of pages of tables 
exceeds 100 pages. Since permitting the filing of tables on compact 
disc, the Office has received voluminous applications having large 
numbers of tables that were under 50 pages in length. Applicants have 
indicated that it would be less burdensome filing these small tables on 
compact disc. Accordingly, the rule is being liberalized while 
balancing the convenience of the Office and the public to view the 
document with the least burden imposed by dual media.
    Section 1.52(e)(1)(iii) is also proposed to be amended to clarify 
what constitutes an electronic page so as to determine compliance with 
the 50- and 100-page requirement for submission of tables on compact 
disc.
    Further clarification is proposed to be provided in Sec.  
1.52(e)(3)(i) as to what is a permanent compact disc. Recordable 
compact discs can be made for recording in a single recording session 
or in multiple recording sessions. To further assure the archival 
nature of the discs, the requirement that recordable discs be finalized 
so that they are closed to further recording is proposed to be added to 
Sec.  1.52. Further, many older CD-ROM drives and audio CD players have 
compatibility problems with un-finalized CDs. This proposed change will 
ensure that the public and the Office will be able to use identical 
copies of any CDs filed with older CD-ROM drives.
    The Office is actively investigating allowing the submission of 
other file formats, such as the Continuous Acquisition and Life Cycle 
Support (CALS) XML format, in addition to the current ASCII format. 
Before allowing the use of a file format, the Office must verify that 
applicants will have the tools to create files easily that are 
archivable and can be rendered to be viewable both by the Office users 
and later by the public when the application is published. Problems 
involving file size limitations, software display, and availability of 
adequate table creation software are delaying implementation at this 
time. The Office intends to broaden Sec.  1.52 to allow at least CALS 
format tables when these problems are resolved. Technical 
specifications and a discussion of operability issues for the CALS 
table format may be found at the OASIS, i.e., Organization for the 
Advancement of Structured Information Standards, Web site pages http://www.oasis-open.org/cover/tr9502.html and http://www.oasis-open.org/specs/a501.htm.
    The Office is also reviewing the acceptability of DVD media. At 
present, there are several different types of recordable DVD media and 
it is unclear which if any will become a standard archivable format. 
Also, the Office is upgrading its capabilities to include the ability 
to read at least some types of DVD media. However, it does not appear 
that any DVD readers can be procured that will be able to read all of 
the different types of DVD media that are now in the marketplace. The 
Office is considering allowing submissions on at least some types of 
DVD media when it becomes clear which types of DVD media are recognized 
as of archivable quality and are compatible with Office hardware and 
software.
    Section 1.53: Section 1.53(e)(2) is proposed to be amended to refer 
to the petition fee set forth in Sec.  1.17(f) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.55: Section 1.55(a)(1)(ii) is proposed to be amended to 
replace ``an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371'' with 
``an international application designating the United States'' (any 
application that enters the national stage from an international 
application after compliance with 35 U.S.C. 371 is also an 
``international application designating the United States''). While 
section 4508 of the American Inventors Protection Act of 1999 (AIPA) as 
originally enacted did not make the eighteen-month publication 
amendments to 35 U.S.C. 119 and 120 applicable to an international 
application unless and until it enters the national stage under 35 
U.S.C. 371 (see Public Law 106-113, 113 Stat. 1501, 1501A-566 through 
1501A-567 (1999)), section 13205 of Public Law 107-273 amended section 
4508 of the AIPA to make the eighteen-month publication amendments to 
35 U.S.C. 119 and 120 in the AIPA also applicable during the 
international stage of an international application. See 116 Stat. 
1758, 1903 (2002).
    Section 1.55(a)(1) is also proposed to be amended to add a 
paragraph (a)(1)(iii) to provide that if an application claiming the 
benefit of a prior foreign application meets the twelve-month filing 
period requirement in 35 U.S.C. 119(a) only through one or more prior-
filed nonprovisional applications or international applications 
designating the United States for which a benefit is claimed under 35 
U.S.C. 120, 121, or 365(c) and Sec.  1.78(a), each such prior-filed 
application must also contain a claim for priority in compliance with 
Sec.  1.55 to the prior foreign application. 35 U.S.C. 119(b)(1) 
provides that an application for patent is not entitled to priority 
under 35 U.S.C. 119(a)-(d) unless a claim is filed in the Office at 
such time during the pendency of the application as required by the 
Director. 35 U.S.C. 119(b)(2) also provides that the Director may 
consider the failure of the applicant to file a timely claim for 
priority as a waiver of any such claim, and that the Director may 
establish procedures, including the payment of a surcharge, to accept 
an unintentionally delayed claim under 35 U.S.C. 119(a)-(d). This time 
period requirement is to ensure that priority claims under 35 U.S.C. 
119(a)-(d) are presented in sufficient time to permit publication of 
the application at eighteen months from the earliest claimed priority 
date under 35 U.S.C. 119(a)-(d). See 145 Cong. Rec. S14,708, S14,719 
(1999) (daily ed. Nov. 17, 1999) (the Conference Report for H.R. 3194, 
106th Cong., 1st. Sess. (1999), which resulted in Public Law 106-113, 
does not contain any discussion (other than the incorporated language) 
of S. 1948; however, a section-by-section analysis of S. 1948 was 
printed in the Congressional Record at the request of Senator Lott). In 
addition, priority claims must be presented in a timely manner in a PCT 
international application filed under 35 U.S.C. 363 to determine (among 
other things) the time limit for national stage entry. Therefore, the 
Office is proposing to amend Sec.  1.55(a) to add a paragraph 
(a)(1)(iii) to make clear that the first-filed application in a chain 
of applications (as well as all intermediate applications) must contain 
a claim for priority in compliance with Sec.  1.55 to a prior foreign 
application for a subsequent application to claim the benefit of the 
prior foreign application through the first-filed application (and all 
intermediate applications).

[[Page 53826]]

    In In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 1973), the Office held 
that a certified copy of a foreign priority document may be filed in a 
continuation application under Sec.  1.60, rather than in its abandoned 
parent application, to meet the requirements in 35 U.S.C. 119 for the 
continuation application to claim the benefit of the foreign priority 
application (through its abandoned parent application). The language of 
Tangsrud, however, is broad enough to imply that neither the claim for 
priority nor the certified copy of the foreign priority document must 
be filed in the first-filed application for a subsequent application to 
claim the benefit of the foreign priority application through the 
first-filed application. This proposed change to Sec.  1.55(a) would 
not affect the holding in Tangsrud that the certified copy of the 
foreign priority document may be filed in a continuing application, 
rather than in an abandoned first-filed application, provided that a 
claim for priority in compliance with Sec.  1.55 to a prior foreign 
application is presented in the first-filed application.
    Section 1.55(a)(4) is proposed to be amended to require that the 
statement that the translation is accurate be signed by the individual 
who made the translation. The Office has received a number of inquiries 
as to who may sign the statement, and has decided that it is 
appropriate to include the requirement that the signature required is 
that of the translator into the rules of practice. See also the 
proposed amendments to Sec. Sec.  1.52(b)(1)(ii), 1.52(d)(1), 1.69(b) 
and 1.78(a)(5)(iv). The requirement that the person who made the 
translation sign the statement that the translation is accurate is 
consistent with current Sec.  3.26.
    Section 1.55(c) is proposed to be amended to change ``365(a)'' to 
``365(a)-(b)'' such that the procedures for acceptance of delayed 
priority claims under Sec.  1.55(c) also apply to delayed priority 
claims under 35 U.S.C. 365(b) in international applications.
    Section 1.57: Section 1.57 is proposed to be added to provide for 
incorporation by reference. Section 1.57(a) as proposed provides that, 
if all or a portion of the specification or drawings is inadvertently 
omitted from an application, but the application contains a claim under 
Sec.  1.55 for priority of a prior-filed foreign application, or Sec.  
1.78 for the benefit of a prior-filed provisional, nonprovisional, or 
international application, that was present on the date of receipt of 
the application, and the omitted portion of the specification or 
drawings is completely contained in the prior-filed application, the 
claim would be considered an incorporation by reference of the prior-
filed application. Sections 1.57(b) through (f) as proposed treat 
incorporation by reference into an application of essential and 
nonessential material by: (1) Providing a definition of essential and 
nonessential material; (2) defining specific language that must be used 
to trigger an incorporation by reference; (3) codifying current 
practice as set forth in MPEP Sec.  608.01(p) (Incorporation by 
Reference), updated to reflect the publication of applications; and (4) 
codifying treatment of improper incorporation by reference.
    Currently, the mere reference to another application is not an 
incorporation of anything therein into the application containing such 
reference for the purpose of the disclosure under 35 U.S.C. 112, ] 1. 
See MPEP Sec. Sec.  201.06(c) and 608.01(p), and In re de Seversky, 474 
F.2d 671, 177 USPQ 144 (CCPA 1973). The proposed rule would allow all 
or a portion of the specification or drawings that is inadvertently 
omitted from an application containing a priority claim for a prior-
filed foreign application, or a benefit claim for a prior-filed 
provisional, nonprovisional, or international application, to be added 
to the application by way of an amendment if the omitted portion of the 
specification or drawings is completely contained in the prior-filed 
application even though there is no explicit incorporation by reference 
of the prior-filed application. The phrase ``completely contained'' in 
Sec.  1.57(a) requires that the material to be added to the application 
under Sec.  1.57(a) must be expressly (as opposed to implicitly) 
disclosed in the prior application. Cf. PLT Rule 2(4)(iv). The claim 
for priority or benefit would have to be present on the date of receipt 
of the application in order for it to be considered an incorporation by 
reference of the prior-filed application. The nonprovisional 
application claiming benefit could be a continuation, divisional, or 
continuation-in-part of the prior application for which benefit is 
claimed. The purpose of the proposed rule is to provide a safeguard for 
applicants when a page(s) of the specification, or a portion thereof, 
or a sheet(s) of the drawings, or a portion thereof, is inadvertently 
omitted from an application.
    If all or a portion of the specification or drawings is 
inadvertently omitted from an application and applicant wants to rely 
on the incorporation by reference provided by the proposed rule, the 
application would need to be amended to include the omitted portion of 
the specification or drawings within the time period set by the Office, 
but in no case later than the close of prosecution as defined by Sec.  
1.114. In order for the omitted material to be included in the 
application, the application must be amended to include it. The 
incorporation by reference provided by the proposed rule requires an 
applicant to timely amend the application to include the omitted 
material in order for this material to be considered part of the 
disclosure. The proposed rule gives the examiner the authority to 
require the applicant to supply a copy of the prior-filed application, 
to supply an English-language translation of any prior-filed 
application that is in a language other than English, and to identify 
where the omitted portion of the specification or drawings can be found 
in the prior-filed application.
    Any amendment to an international application pursuant to the 
proposed rule would be effective only as to the United States. See 
proposed Sec.  1.57(a)(2). In addition, no request to add the missing 
part of the description or the missing drawing in an international 
application designating the United States will be acted upon by the 
Office prior to the expiration of the applicable time limit under PCT 
Article 22(1) or (2), or Article 39(a).
    If an application is not entitled to a filing date under Sec.  
1.53(b) or under PCT Article 11, the amendment must be by way of a 
petition accompanied by the fee set forth in Sec.  1.17(f). See 
proposed Sec.  1.57(a)(3).
    The proposed rule is similar to the current practice under MPEP 
Sec.  201.06(c) where there is an explicit incorporation by reference 
of the prior U.S. application contained in the specification or in the 
application transmittal letter of a continuation or divisional 
application filed under Sec.  1.53(b). See MPEP Sec.  201.06(c) 
(Incorporation by Reference). The proposed rule is also consistent with 
the PLT Article 5(6)(b) and Rule 2(3) and (4).
    Of course, whether the proposed rule is adopted or not, applicants 
may continue to explicitly incorporate by reference a prior application 
or applications by including, in the body of the specification as 
filed, a statement that the prior application or applications is 
``hereby incorporated by reference.'' Such an explicit incorporation by 
reference would not be limited to inadvertent omissions as in the 
proposed rule. Accordingly, applicants are encouraged to explicitly 
incorporate by reference a prior application or applications by 
including

[[Page 53827]]

such a statement in the body of the specification, if appropriate.
    Sometimes applicants intentionally omit material from a prior-filed 
application when filing an application claiming priority to, or benefit 
of, a prior-filed application. As discussed, the incorporation by 
reference would only permit material that was inadvertently omitted 
from the application to be added to the application if the omitted 
material is completely contained in the prior-filed application. 
Therefore, if the proposed rule were adopted, applicants would still be 
able to intentionally omit material contained in the prior-filed 
application from the application containing the priority or benefit 
claim without the material coming back in by virtue of the 
incorporation by reference. Applicants would be able to maintain their 
intent by simply not amending the application to include the 
intentionally omitted material. Thus, there should be no impact from 
the proposed rule in continuing applications where material from the 
prior application has been intentionally omitted. Therefore, the 
proposed rule has been drafted such that the application claiming 
benefit of a prior U.S. application could be a continuation-in-part 
application (as well as a continuation or divisional).
    The proposed rule would not apply to any applications filed before 
the effective date of the rule. The proposed rule would be prospective 
only since to apply the rule retroactively would result in changing the 
expectations regarding incorporation by reference by applicants when 
the applications were filed.
    The Office is interested in comments from the public regarding 
proposed Sec.  1.57(a), whether there is support or opposition for the 
proposed rule, and whether there is any desire to limit the proposed 
rule to continuation or divisional applications and not have it apply 
to continuation-in-part applications.
    Section 1.57(b) clarifies what is acceptable language that 
identifies an incorporation by reference for essential and non-
essential matter as opposed to incorporation by reference of material 
in a prior application as is proposed in Sec.  1.57(a). Applicants 
sometimes refer to other applications, patents, and publications, 
including patent application publications using language which does not 
clearly indicate whether what is being referred to is incorporated by 
reference or is just an informational reference. The Office is 
proposing to limit incorporation by reference (except as provided in 
Sec.  1.57(a)) to instances only where the words ``incorporated by 
reference'' appear. The Office is attempting to bring greater clarity 
to the record and provide a bright line test as to where something 
being referred to is an incorporation by reference. The Office 
considered the alternative of making any mention of a document an 
automatic incorporation by reference of the document. Patent 
applications frequently contain a discussion of prior art documents 
when discussing the background of the invention, which prior art 
documents are not intended to be incorporated by reference. The 
necessity for Sec.  1.57(b) is that applicants who fail to clearly link 
certain disclosures to means-plus-function language risk having their 
claims interpreted too narrowly or held unenforceable. Clarifying when 
material is incorporated by reference during examination by use of 
specific trigger language is considered an aid to applicants when they 
invoke 35 U.S.C. 112, ] 6. Applicants would be aided by avoiding 
narrowed claim construction as a result of a number of court decisions 
which would not look for equivalents outside of the application. See 
Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d 
1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124 
F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as 
automatically incorporated might result in unintended consequences such 
as when a means-plus-function claim is presented under 35 U.S.C. 112, ] 
6.
    Similarly, applicants would be aided by not having their claims 
found unpatentable by a mere reference to outside material 
unintentionally incorporating material that contained equivalents that 
would broaden their claims to encompass the prior art. Automatic 
incorporation by reference would create a trap for applicants and 
practitioners by creating unintentional equivalents for 35 U.S.C. 112, 
] 6, language broadening claims to be unpatentable. Additionally, as 
claims are generally read in light of the specification, what is 
actually incorporated into the specification can affect the scope of 
the claims independent of 35 U.S.C. 112, ] 6.
    Accordingly, comments are desired identifying alternative language 
to that proposed in paragraph (b) or why requiring this specific 
language would be a problem.
    A patent application incorporating by reference other material 
must, as described in paragraph (b), include an identification of the 
referenced patent, application, or publication pursuant to Sec.  
1.98(b)(1) through (b)(5). The Office recommends that particular 
attention be directed to specific portions of referenced documents 
where the subject matter incorporated may be found if large amounts of 
material are incorporated. Guidelines for situations where applicant is 
permitted to fill in a number for Application No. ---- left blank in 
the application as filed can be found in In re Fouche, 439 F.2d 1237, 
169 USPQ 429 (CCPA 1971). Commonly assigned abandoned applications less 
than 20 years old can be incorporated by reference to the same extent 
as copending applications; both types are open to the public upon the 
referencing application issuing as a patent. See MPEP Sec.  103.
    Section 1.57(c) codifies current practice in MPEP Sec.  608.01(p) 
(Incorporation by Reference), except that Sec.  1.57(c) as proposed is 
limited to U.S. patent or U.S. patent application publications (i.e., 
the Office proposes to eliminate the practice of incorporating by 
reference essential material in unpublished patents in which the issue 
fee for an application has been paid but the application has not yet 
issued as a patent). Delays in issuance or the withdrawal from issue of 
an allowed application put in doubt that an application incorporated by 
reference will be available to the public when a patent incorporating 
the other application issues. Similarly, this provision permitting only 
the incorporation of the publication document of an application is 
intended to preclude incorporation by reference of material found only 
in the redacted portion of a published patent application.
    Section 1.57(c) updates current practice to reflect publication of 
applications in two areas. Current practice permits holding in abeyance 
correction of material incorporated by reference from unpublished U.S. 
applications that have not issued as patents until allowance of the 
application making the incorporation by reference. Publication of the 
applications which contain an incorporation by reference means that the 
public will need access to the material incorporated by reference prior 
to an application being issued as a patent. Where the incorporation is 
to an unpublished application that has not issued as a patent, such 
application is not readily available. Therefore, holding the correction 
of an incorporation by reference in abeyance in this situation will 
materially impair the public's access to the invention that is 
disclosed by the published application that incorporates an unpublished 
application.
    The Office considered but rejected including unpublished abandoned

[[Page 53828]]

applications (which are otherwise open to the public under Sec.  
1.14(a)(iv)) as acceptable documents for incorporation by reference 
since the text of abandoned applications is not published after 
abandonment on the Internet at this time. The Office is considering how 
to make previously unpublished material to which the public is 
currently permitted access pursuant to Sec.  1.14(a)(iv) (e.g., 
unpublished incorporated by reference applications) available on the 
Internet. The Office may reconsider this position when its electronic 
file wrapper permits access to the text of unpublished abandoned 
applications on the Internet.
    Section 1.57(c)(1) through (c)(3) defines essential material as 
those items required by 35 U.S.C. 112, ]] 1, 2, and 6.
    Section 1.57(d) defines the scope of incorporation by reference 
practice for nonessential subject matter. As discussed with respect to 
Sec.  1.57(c), the Director has considerable discretion in determining 
what may or may not be incorporated by reference in a patent 
application. Through the Office's incorporation by reference policy, 
the Office ensures that reasonably complete disclosures are published 
as U.S. patents and U.S. application publications.
    Section 1.57(e) is added so that it is clear that a copy of the 
incorporated by reference material may be required to be submitted to 
the Office even if the material is properly incorporated by reference. 
The examiner may require a copy of the incorporated material simply to 
review it and understand what is being incorporated or to put the 
description of the material in its proper context. Another instance 
where a copy of the reference may be required is where the material is 
being inserted by amendment into the body of the application to replace 
the incorporation by reference statement.
    Section 1.57(f) addresses corrections of incorporation by 
reference. Section 1.57(f) provides that improper incorporation by 
reference statements may be corrected with a timely filed amendment. 
Nothing in Sec.  1.57(f) authorizes the insertion of new matter into an 
application. The Office is concerned that improper incorporation by 
reference statements and late corrections thereof require the 
expenditure of unnecessary examination resources and slow the 
prosecution process. By treating improper incorporation by reference 
statements as not incorporating any material (until the incorporation 
by reference is corrected), the Office and applicants will avoid 
expending unnecessary resources and delays in prosecution occasioned by 
the many references to extraneous material that are often found in 
patent applications. Applicants know whether they want material 
incorporated by reference, and must timely correct any incorporation by 
reference errors.
    Section 1.58: Section 1.58(a) is proposed to be amended to provide 
that a table not be included in both the drawings and in the body of 
the specification of an application. Section 1.58(b) is also proposed 
to be amended to clarify that correct visual alignment of rows and 
columns of chemical and mathematical formulae and tables is retained 
when the electronic file is rendered by opening and displaying the 
electronic file at the Office using a text viewer program. Section 
1.58(c) is additionally proposed to be amended to recommend that the 
font size of text be at least 0.166 inches or 0.422 cm. and to 
eliminate a reference to elite type font.
    Section 1.58(a) is proposed to be amended because applicants have 
been making voluminous applications even larger by including the same 
table as both a drawing figure and as text in the body of an 
application. Filing duplicate tables requires additional review by the 
Office to determine if the drawing table and the text table are 
duplicates and to identify differences if any differences exist. 
Moreover, the number of pages is effectively increased, causing 
increased scanning, storage and reproduction costs. In addition, the 
burden on the public to copy and review a published application or 
patent is also increased. See Sec.  1.83 for a similar proposed change 
involving tables and sequence listings.
    Section 1.58(b) is proposed to be amended adding ``visually'' so 
that it is clear that the data in the electronic file are appropriately 
formatted so that the alignment of rows and columns is maintained in 
the table when the file is opened to view at the Office. The Office has 
found that some filers have only been providing markers to identify 
rows and columns in table data. When the table is viewed at the Office 
the markers do not cause the rows and columns of data to be visually 
aligned. Unless each entry in a table is surrounded with an appropriate 
number of spaces the visual spatial alignment of the table is not 
maintained: i.e., the rows and cells are mis-aligned. A way to provide 
the proper alignment is to insert space characters in each cell so that 
the overall number of characters in each cell is the same, and to 
maintain a constant font width for all characters.
    Many programs that are used to generate tables allow the user to 
provide additional spaces manually when typing data. Many of these 
programs also provide an automated way to pad the cells with space 
characters, and create an ASCII file with spatially aligned data. This 
feature is generally invoked by a command that is often called printing 
to a ``formatted text'' format or ``prn'' file. The program formats the 
table as it would appear on paper padding the cells with spaces to 
provide proper alignment of the cell entries.
    A review of different versions of the same software product and of 
different software products showed no consistency in the menu language 
used for the formatting command noted above. With the constant change 
in software versions, the Office is not able to provide a list of all 
the menu variations. However, a person knowledgeable with the software 
used to create tabular data should be able to find the commands to 
invoke this feature in the software.
    Section 1.58(c) is proposed to be amended for the same reason that 
Sec.  1.52(b)(2)(ii) is proposed to be amended. Section 1.58(c) 
currently requires that the text be in a lettering style that is at 
least 0.08 inches high, which is the minimum font size set forth in 
Patent Cooperation Treaty (PCT) Rule 11.9. Text having a font size only 
0.08 inches high is difficult to capture with optical character 
recognition technology and may not be reproducible as required by Sec.  
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A font size of 12 (12/72 inch or 
0.166 inch (0.422 cm.) high) is significantly more reproducible than a 
font size of 6 (6/72 inch or 0.08 inch (0.211 cm.) high). Accordingly, 
Sec.  1.58(c) is proposed to be amended to indicate a preference for a 
larger font size. In addition, the reference to elite type is proposed 
to be deleted as it was inconsistent with the size given. Elite type is 
a typewriter type that runs 12 characters to the inch. Instead of 
referencing elite type, the rule is proposed to reference a font size 
of 6 which should be more meaningful to most patent applicants (most 
word processing software programs have an option to choose a font and a 
font size).
    Section 1.59: Section 1.59 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.69: Section 1.69(b) is proposed to be amended by deleting 
the words ``or approved'' as unnecessary, and possibly leading to 
confusion and the mistaken assumption that the Office has a procedure 
for the approval of applicant generated forms, where no such procedure 
exists. See Changes to Implement the Patent Business Goals,

[[Page 53829]]

64 FR 53771, 53777 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 20 
(Nov. 2, 1999) (proposed rule) (declining to adopt a review service for 
applicant-created forms). In addition, paragraph (b) of Sec.  1.69 is 
proposed to be amended to require that the statement that the 
translation is accurate be signed by the individual who made the 
translation. The Office has received a number of inquiries as to who 
may sign the statement required by the current rule and how the 
statement must be signed. The Office has decided to clarify that the 
signature required is that of the translator. See also the proposed 
amendments to Sec. Sec.  1.52(b)(1)(ii), 1.52(d)(1), 1.55(a)(4) and 
1.78(a)(5)(iv). The requirement that the person who made the 
translation sign the statement that the translation is accurate is 
consistent with current Sec.  3.26.
    Section 1.76: Section 1.76(a) is proposed to be amended to require 
that any application data sheet (ADS) contain the seven headings listed 
in Sec.  1.76(b) and all of the appropriate data for each section 
heading. The proposed amendment would also require that the ADS be 
titled ``Application Data Sheet.'' Any label (e.g., the label ``Given 
Name'' in the ``Applicant Information'' heading) that does not contain 
any corresponding data will be interpreted by the Office to mean that 
there is no corresponding data for that label anywhere in the 
application. By requiring an ADS to contain all seven section headings, 
and any appropriate data for the sections, the accuracy of 
bibliographic data in patent applications will be enhanced and the need 
for corrected filing receipts related to Office errors will be reduced.
    Section 1.76(c)(2) is proposed to be amended to require a 
supplemental application data sheet to be labeled ``Supplemental 
Application Data Sheet'' and to also contain all of the headings listed 
in Sec.  1.76(b) with any appropriate data for each heading, rather 
than only identifying the information that is being changed (added, 
deleted, or modified) in the supplemental ADS. Requiring a supplemental 
ADS to contain all of the information from the ADS with the changes 
indicated is consistent with the ADS guide posted on the Office's 
Internet Web site at: http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html. A supplemental ADS containing only new or changed 
information is likely to confuse the record, create unnecessary work 
for the Office, and would not comply with Sec.  1.76 if amended as 
proposed. When submitting an ADS after the initial filing of the 
application to correct, modify, or augment the original application 
data included in an ADS, the following applies: (1) The supplemental 
application data sheet must be labeled ``Supplemental Application Data 
Sheet''; (2) the ``Supplemental Application Data Sheet'' is a full 
replacement copy of the original application data sheet, with each of 
the seven section headings, and with any appropriate data for the 
section headings; and (3) the ``Supplemental Application Data Sheet'' 
must be submitted with any changes or additions underlined (for 
deletions without replacement data, use strike-through or brackets).
    When submitting an ADS to correct, modify, or augment application 
data (see Sec.  1.76(d)), when an ADS has not been previously filed, 
the first-filed ADS is not considered a supplemental ADS even if such 
is filed subsequent to the initial filing of the oath or declaration. 
When submitting such an ADS: (1) The application data sheet must be 
labeled ``Application Data Sheet''; and (2) a complete application data 
sheet including all appropriate information for each heading must be 
submitted.
    Section 1.78: Section 1.78(a)(1) is proposed to be amended to 
delete an unnecessary alternate condition to permit a claim for the 
benefit of a prior-filed application. Sections 1.78(a)(2) and (a)(5) 
are proposed to be amended to permit the required reference to the 
prior application(s) to be in multiple sentences at the beginning of 
the specification, rather than being limited to the first sentence of 
the specification.
    Section 1.78(a)(1) sets forth the conditions under which a 
nonprovisional application may claim the benefit of one or more prior-
filed copending U.S. nonprovisional applications or international 
applications designating the United States of America. Where the prior-
filed application is a nonprovisional application (filed under 35 
U.S.C. 111(a)), one of the conditions under Sec.  1.78(a)(1) is met 
when the prior-filed application satisfied any one of paragraphs (ii), 
(iii) or (iv) of Sec.  1.78(a)(1). To satisfy paragraph (ii), the 
prior-filed application must be ``[c]omplete as set forth in Sec.  
1.51(b).'' To satisfy paragraph (iii), the prior-filed application must 
be ``[e]ntitled to a filing date as set forth in Sec.  1.53(b) or Sec.  
1.53(d) and include the basic filing fee set forth in Sec.  1.16.'' 
Considering that paragraph (iii) is less restrictive than paragraph 
(ii), it is proposed to delete paragraph (ii) (and redesignate 
paragraphs (iii) and (iv) as paragraphs (ii) and (iii), respectively) 
as it is unnecessary because any prior-filed application that would 
satisfy paragraph (ii) would also satisfy paragraph (iii).
    Sections 1.78(a)(2)(iii) and (a)(5)(iii) are proposed to be amended 
to change the word ``sentence'' to ``sentence(s)''. The proposed change 
would permit the required reference to the prior application(s) to be 
in more than one sentence at the beginning of the specification. In 
some situations, it would be easier and clearer to set forth the 
relationship between prior applications if more than one sentence were 
permitted. For example, where there is a provisional application and 
multiple intermediate nonprovisional applications, the required 
identification in the latest nonprovisional application as to which 
intermediate nonprovisional application(s) claims benefit to the 
provisional application (i.e., is within one year of the provisional 
application's filing date), could be set forth in a clearer manner 
using multiple sentences.
    Section 1.78(a)(5)(iv) is proposed to be amended to require that 
the statement that the translation is accurate be signed by the 
individual who made the translation. The Office has received a number 
of inquiries as to who may sign the statement, and has decided that it 
is appropriate to include the requirement that the signature required 
is that of the translator into the rules of practice. See also the 
proposed amendments to Sec. Sec.  1.52(b)(1)(ii) and (d)(1), 1.55(a)(4) 
and 1.69(b). The requirement that the person who made the translation 
sign the statement that the translation is accurate is consistent with 
current Sec.  3.26.
    Section 1.78(c) is proposed to be amended to clarify that the prior 
art exception under 35 U.S.C. 103(c) does not apply to double patenting 
rejections by the addition of the last sentence, which states ``Even if 
the claimed inventions were commonly owned, or subject to an obligation 
of assignment to the same person, at the time the later invention was 
made, the conflicting claims may be rejected under the doctrine of 
double patenting in view of such commonly owned or assigned 
applications or patents under reexamination.'' Therefore, Sec.  1.78(c) 
emphasizes that double patenting rejections should still be made, when 
appropriate, even if a reference is disqualified from being used in a 
rejection under 35 U.S.C. 103(a) via the prior art exclusion under 35 
U.S.C. 103(c). This clarification codifies patent policy regarding 
double patenting rejections and the prior art exclusion under 35 U.S.C. 
103(c) as set forth in the notice Guidelines Concerning the 
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the 
Interpretation of the Term ``Original Application'' in

[[Page 53830]]

the American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. 
Office 54 (Apr. 11, 2000)) and MPEP Sec.  706.02(l)(1). Additionally, 
the first sentence of Sec.  1.78(c) is proposed to be amended by 
changing the word ``party'' to ``person'' in order to use terminology 
consistent with 35 U.S.C. 103(c).
    Section 1.83: Section 1.83(a) is proposed to be amended to provide 
that tables and sequence listings that are in the specification are not 
permitted to also be included in the drawings. Applicants should not be 
obliged to include tables or the sequence listing in the drawings due 
to the current requirement of Sec.  1.83(a) that all claimed features 
must be shown in the drawings. Under the proposed amendment, if the 
specification includes a sequence listing or a table, such a sequence 
listing or table would not be permitted to be repeated in the drawings.
    See Sec.  1.58(a) for a similar proposed change to require that 
tables be included in only one of the drawings and the specification.
    Section 1.84: Section 1.84 is proposed to be amended by revising 
Sec.  1.84(a)(2)(iii) to remove the requirement for submission of a 
black and white copy of any color drawings or photographs. Section 
1.84(a)(2)(iv) is proposed to be amended to become (a)(2)(iii). Section 
1.84(c) is proposed to be amended to clarify that identification 
(labeling) of the drawings is recommended, but not required, and to 
change the recommended location of any identification of the drawings.
    Section 1.84(a)(2) is proposed to be amended to remove the 
requirement for a black and white copy of a color drawing or 
photograph. This requirement has already been waived. See Interim 
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement 
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of 
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
    Section 1.84(c) is proposed to be amended to remove the requirement 
that the identification of drawings must be placed on the front of each 
sheet of drawing, if the information is provided. The Office prefers 
that the identification of drawings be placed on the front of each 
sheet of drawing so that photocopies and scanned images of the drawings 
will be properly identified with the application. The Office has new 
scanners that will endorse in the top margin starting 3.5 inch from the 
right edge and ending 1 inch from the right edge of the paper. 
Therefore, applicants are strongly encouraged to place the information 
on the front of each sheet, to the left of the center on the top margin 
so that the identification does not overlap the endorsement, and so 
that the identification will be included in any photocopies of the 
drawings. The Office, however, recognizes that some applications have 
long titles or identification that could not be placed completely on 
the front within the top margin. In such a situation, the 
identification of drawings may be placed on the back of each sheet 
(understanding that the backs of drawing sheets will not be scanned), 
but placing part of the identification (e.g., the application number 
and the first inventor's name) on the front is recommended. If the 
identification of drawings is placed on the front of each sheet, the 
identification must be placed to the left of center within the top 
margin.
    Section 1.91: Section 1.91 is proposed to be amended to add a 
paragraph (c), which provides that a model or exhibit must be 
accompanied by photographs that show multiple views of the material 
features of the model or exhibit and that substantially conform to the 
requirements of Sec.  1.84. Material features are considered to be 
those features which represent that portion(s) of the model or exhibit 
forming the basis for which the model or exhibit has been submitted. 
Since the Office generally returns or otherwise disposes of models or 
exhibits when they are no longer necessary for the conduct of business 
before the Office (Sec.  1.94), such photographs are necessary for the 
file of the application or proceeding to contain an adequate record of 
the model or exhibit submitted to the Office. Section 1.91(c) would 
also provide that this requirement does not apply if the model or 
exhibit substantially conforms to the requirements of Sec.  1.52 or 
Sec.  1.84, since a model or exhibit that substantially conforms to the 
requirements of Sec.  1.52 or Sec.  1.84 can itself be retained in the 
file wrapper of the application or proceeding.
    In applications where the exhibit is not intended to display the 
medium of submission (e.g., video tapes, DVDs, and compact discs) but 
the content of the submission, the requirement that the photographs be 
of the substantive content is included in this paragraph. Video tapes, 
DVDs, and compact discs are usually submitted with movies or multimedia 
images. The requirement that the photographs submitted should show the 
material features that were being exhibited is intended to require that 
the photograph be that of the content of the material, not a photograph 
of the medium of submission. Hence, if video or multimedia submission 
is contained on a tape or disc, the corresponding photograph should be 
a still image single frame of a movie, and not a submission of a 
photograph of a video cassette, DVD disc or compact disc.
    A video or DVD is not the type of model or exhibit that would 
substantially conform to the requirements of Sec. Sec.  1.52 or 1.84. 
The Office does not intend to store bulky items, such as videos, 
particularly as the Office is moving toward an Image File Wrapper. See 
Changes To Implement Electronic Maintenance of Official Patent 
Application Records, 68 FR 38611 (June 30, 2003). Accordingly, where a 
video or DVD or similar item is submitted as a model or exhibit, the 
requirement of Sec.  1.91(c) for supplying photographs of what is 
depicted in the video or DVD, pursuant to Sec.  1.84, would need to be 
met.
    The Office is interested in comments as to whether the requirement 
for supplying photographs, particularly for a video or DVD, is overly 
broad and an adequate description could be presented by some other type 
of description, such as a written statement.
    Section 1.94: Section 1.94 is proposed to be amended to be divided 
into paragraphs (a) through (c). Paragraph (a) provides that once 
notification is sent to applicant, arrangements must be made by 
applicant for the return of the model, exhibit, or specimen at 
applicant's expense, in response to such notification. Where the model, 
exhibit or specimen is a perishable, it will be presumed that the 
Office has permission to dispose of the item without notice to 
applicant, unless applicant notifies the Office upon submission of the 
item that a return is desired and arrangements are promptly made for 
its return upon notification by the Office.
    Paragraph (b) provides that applicant is responsible for retaining 
the actual model, exhibit, or specimen for the enforceable life of any 
patent resulting from the application. Section 1.94 would also provide 
that its provisions do not apply: (1) If the model or exhibit 
substantially conforms to the requirements of Sec. 1.52 or Sec.  1.84, 
since a model or exhibit that substantially conforms to the 
requirements of Sec.  1.52 or Sec.  1.84 can itself be retained in the 
file wrapper of the application or proceeding; (2) where a model, 
exhibit, or specimen has been described by photographs that conform to 
Sec.  1.84, or (3) where the model, exhibit, or specimen is a 
perishable.
    Paragraph (c) provides that the notification to applicant will set 
a period of time within which applicant must make arrangements for a 
return of a model, exhibit, or specimen, with

[[Page 53831]]

extensions of time available under Sec.  1.136, except in the case of 
perishables. The Office intends to set a one-month period of time from 
the mailing date of the notification for applicant to make arrangements 
for a return, unless the item is a perishable, in which case the time 
period will be shorter. Failure by applicant to establish that 
arrangements for the return of a model, exhibit or specimen have been 
made within the time period set in the notice, will result in the item 
being discarded by the Office.
    Section 1.98: Section 1.98(a) is proposed to be amended by revising 
paragraph (a)(1) to require a specified format/identification for each 
page of an IDS, and that U.S. patents and U.S. patent application 
publications be listed in a section separately from citations of other 
documents. Section 1.98(a)(1) is specifically proposed to be amended to 
require that U.S. patents and U.S. patent application publications must 
be listed separately from the citations of other documents. This will 
permit the Office to optical character recognition (OCR) scan the U.S. 
patent numbers and the U.S. patent application publication numbers such 
that the document could be made available electronically to the 
examiner to facilitate searching and retrieval of U.S. patents and U.S. 
patent application publications on the Office's search databases. 
Applicants will comply with this proposed requirement if they use forms 
PTO/SB/08A and 08B (or the more commonly used PTO-1449), which provide 
a separate section for listing U.S. patents and U.S. patent application 
publications. Applicants who do not use these forms for submitting an 
IDS must make sure that the U.S. patents and U.S. patent application 
publications are listed in a separate section from citations of other 
documents.
    Current Sec.  1.98(a)(1) does not require the use of a form such as 
the PTO/SB/08A and 08B because the Office wishes to provide applicants 
the flexibility to use other types of lists. The Office, however, 
experiences problems associated with lists that do not properly 
identify the application in which the IDS is being submitted: e.g., 
when applicants submit a list that includes copies of PTO-1449 or PTO-
892 forms from other applications. Even though the IDS transmittal 
letter has the proper application number, each page of the list does 
not include the proper application number, but instead has the 
application numbers of the other applications. Should the pages of the 
list become separated, the Office cannot associate the pages with the 
proper application. Therefore, the rule is proposed to be amended to 
require that each page of the list must clearly identify the 
application number of the application in which the IDS is being 
submitted.
    Section 1.98(a)(1) is also proposed to be amended to require that a 
list must include a column that provides a space next to each document 
listed in order to permit the examiner to enter his or her initials 
next to the citations of the documents that have been considered by the 
examiner. This provides a notification to the applicant and a clear 
record in the application to indicate which documents have been 
considered by the examiner for the application. Applicants are strongly 
discouraged from submitting a list that includes copies of PTO/SB/08 
(PTO-1449) or PTO-892 forms from other applications. A completed PTO/
SB/08 or PTO-1449 form from another application may already have 
initials of another examiner and the application number of another 
application. The burden is then on the Office to correct the incorrect 
information. Furthermore, when the spaces provided on the form have 
initials of another examiner, there are no spaces available next to the 
documents listed for the examiner of the subsequent application to 
provide his or her initials.
    Section 1.98(a)(1) is also proposed to be amended to require that 
each page of the list includes a heading that clearly indicates that 
the list is an information disclosure statement. Since the Office 
treats an IDS submitted by the applicant differently than information 
submitted by a third-party (e.g., the Office may discard any non-
compliant third-party submission under Sec.  1.99), a heading on each 
page of the list to indicate that the list is an IDS would promote 
proper treatment of the IDS submitted by the applicant and reduce 
handling errors.
    Section 1.98(e) is proposed to be amended to provide that the 
requirement in Sec.  1.98(a)(2) for a copy of the U.S. patents or U.S. 
patent application publications listed in an information disclosure 
statement does not apply: (1) In any national patent application filed 
after June 30, 2003; (2) in any international application that has 
entered the national stage under 35 U.S.C. 371 and Sec.  1.495 after 
June 30, 2003; or (3) in any information disclosure statement submitted 
in compliance with the Office's electronic filing system. See 
Information Disclosure Statements May Be Filed Without Copies of U.S. 
Patents and Published Applications in Patent Applications filed after 
June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).
    Section 1.102: Section 1.102(c) would be amended to provide by rule 
for a petition to make an application special without a fee when the 
application relates to a counter-terrorism invention. The Office 
currently accords ``special'' status to patent applications relating to 
counter-terrorism technology so long as the fee under Sec.  1.17(h) is 
included with the petition. Amending Sec.  1.102(c) to cover 
applications relating to counter-terrorism inventions will eliminate 
the requirement for a fee.
    Under current Sec.  1.102(c), there are two types of inventions 
that qualify as a basis for making an application special without a fee 
(other than on the basis of an applicant's age or health), namely: (1) 
Inventions that will materially enhance the quality of the environment; 
and (2) inventions that will materially contribute to the development 
or conservation of energy resources. It is proposed that inventions 
that will materially contribute to countering terrorism be added as a 
third type of invention for making an application special without a fee 
under Sec.  1.102(c). As set forth in MPEP Sec.  708.02, XI (Inventions 
For Countering Terrorism), the types of technology for countering 
terrorism include, but are not limited to, systems for detecting/
identifying explosives, aircraft sensors/security systems, and 
vehicular barricades/disabling systems. This is appropriate considering 
that such inventions may help maintain homeland security. In view of 
this proposed amendment, the basis for making applications relating to 
counter-terrorism technology special would be transferred from Sec.  
1.102(d) to Sec.  1.102(c).
    Pursuant to the proposed amendment, Sec.  1.102(c) sets forth two 
bases for making an application special: (1) Applicant's age or health; 
or (2) that the invention is one of the three qualifying types of 
inventions (i.e., the invention is one that will materially enhance the 
quality of the environment, materially contribute to the development or 
conservation of energy resources, or materially contribute to 
countering terrorism). In view of the divergent subject matter covered 
by Sec.  1.102(c)(1) and (c)(2), a petition under Sec.  1.102(c)(1) or 
(c)(2) must identify the particular basis under which applicant is 
petitioning for special status so that the Office can determine how to 
evaluate an application's entitlement to special status. In addition, 
MPEP Sec.  708.02 indicates that a ``petition for special status should 
be accompanied by a statement explaining how the invention contributes 
to countering terrorism'' as defined in MPEP Sec.  708.02, XI, 
Inventions For Countering Terrorism.

[[Page 53832]]

Applicants are reminded that any identification of a basis for 
requesting special status and a statement of compliance with the 
technology specific requirement for special status must be based upon a 
good faith belief that the invention in fact qualifies for special 
status. See Sec. Sec.  1.56 and 10.18.
    Section 1.103: Section 1.103(a) is proposed to be amended to refer 
to the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.105: Section 1.105(a) is proposed to be amended to 
redesignate paragraph (a)(3) as paragraph (a)(4) and add new paragraphs 
(a)(1)(viii) and (a)(3). Sections 1.105(a)(1)(viii) and (a)(3) contain 
additional examples of information requirements and set forth exemplary 
formats to portray the use of Sec.  1.105 to seek stipulations, for 
example, as to the knowledge of those of ordinary skill in the art, and 
to require responses to interrogatories, for example, as to applicant's 
understanding of the knowledge of persons of ordinary skill in the 
relevant art.
    This proposal sets forth a practice for soliciting applicant's 
knowledge, such as stipulations to clarify the record by removing 
uncontroverted assertions from further consideration, or for soliciting 
the applicant's response to specific questions based on the applicant's 
knowledge to resolve outstanding issues. The requirement for 
information provisions of Sec.  1.105(a)(1) contain several examples, 
not by any means exhaustive, of the types of information that may be 
required from applicants under Sec.  1.105. The Office is proposing to 
add the following examples to Sec.  1.105(a)(1): Technical information 
known to applicant concerning the interpretation of the related art, 
the disclosure, the claimed subject matter, other information pertinent 
to patentability, or the accuracy of the examiner's stated 
interpretation of such items. The format of such a requirement would 
differ markedly from the format of the existing examples, which 
generally require specific documents. New paragraph (a)(3) provides 
examples of formats for requirements for information: (1) a requirement 
for documents; (2) interrogatories in the form of specific questions 
seeking applicant's knowledge; or (3) stipulations in the form of 
statements with which the applicant may agree or disagree. The existing 
provisions of paragraph (a)(3) would be included in paragraph (a)(4), 
which would also recognize that information in the form of opinion 
might not be held, and permit a reply to a requirement for opinion to 
be considered complete where it is stated that an opinion is not held.
    35 U.S.C. 101, 102, 103 and 112 require that claimed subject matter 
be among those eligible for patentability, provide utility that is 
substantial, credible and specific, be supported by a written 
disclosure that teaches how to make and use the invention and be 
definite in characterization, and be novel and non-obvious to a person 
of ordinary skill in the art. Evidentiary issues surrounding these 
patentability conditions frequently arise that require applicant reply 
for resolution.
    In particular, the knowledge and skill of a person of ordinary 
skill in the art is highly pertinent to the resultant utility, to the 
degree of disclosure required, and to the degree to which prior art 
reads on claimed subject matter in view of inherent aspects and 
standard practices and knowledge in the art. However, evidence of what 
the indicia would be for that knowledge and skill may be highly 
burdensome to collect, and may be particularly wasteful of examiner 
resources for certain elementary issues, such as in common matters of 
scientific and engineering practice.
    The Office is considering the use of stipulations and 
interrogatories relating to elements of the prior art, recognitions of 
problems to be solved, and rationales for combinations.
    Applicant and the examiner may agree on the knowledge exhibited by 
persons of ordinary skill in the art, and this may be documented by 
formal stipulation. Alternatively, the examiner may articulate specific 
questions for applicant response in the form of an interrogatory 
designed to elicit the aspects of the knowledge of persons of ordinary 
skill in the art pertinent to analyzing patentability arising from the 
art of record.
    Additional instances where stipulations and interrogatories may be 
used to elicit information reasonably necessary to examination include 
eliciting: (1) Applicant's interpretation of the distinctions among 
claims; (2) applicant's interpretation of the common technical features 
shared among all claims, or admission that certain groups of claims do 
not share any common technical features; (3) applicant's intention for 
the scope of structural and procedural support found in the disclosure 
for means or step plus function claims; (4) applicant's interpretation 
for precisely which portions of the disclosure provide the written 
description and enablement support for each claim element; (5) 
applicant's interpretation for the intended breadth of claim terms, 
particularly where those terms are not used per se in the 
specification; (6) applicant's interpretation of which portions of each 
claim correspond to the admitted prior art in the specification; (7) 
applicant's interpretation of the specific utility provided by the 
claimed subject matter; and (8) applicant's identification of new 
subject matter in a continuation-in-part.
    All requirements for information under Sec.  1.105 must be 
reasonably necessary to treating a matter in an application. As such, 
requirements for information must be specific in the articulation of 
what is required and must exhibit a reasonable likelihood of being 
readily fulfilled by the applicant. The Office's policy of compact 
prosecution requires that both examiners and applicants provide the 
information necessary to raise and resolve the issues related to 
patentability expeditiously. Where information highly pertinent to 
patentability determination may be required in a form that is readily 
responded to, such as with solicitations of stipulations or 
interrogatories directly related to the issues on the record, such a 
requirement is consistent with the policies of compact prosecution and 
reasonable necessity for making requirements.
    Section 1.111: Section 1.111(a)(2) is proposed to be amended to 
provide that a supplemental reply to a non-final Office action will not 
be entered as a matter of right, with the exception that a supplemental 
reply will be entered if it is filed within the period when action by 
the Office is suspended under Sec.  1.103(a) through (c) (suspensions 
requested by the applicant). The proposed amendment to Sec.  
1.111(a)(2) would also provide that the Office may enter a supplemental 
reply that is filed before the expiration of the statutory period 
(i.e., within six months from the mailing date of the non-final Office 
action) if the supplemental reply is clearly limited to: (1) 
Cancellation of a claim(s); (2) adoption of an examiner suggestion(s); 
or (3) placement of the application in condition for allowance. The 
proposed amendment to Sec.  1.111(a)(2) would replace the current 
procedures for disapproving a second or subsequent supplemental reply 
set forth in Sec.  1.111(a)(2).
    The proposed amendment to Sec.  1.111(a)(2) would encourage 
applicants to utilize the Office's resources more efficiently, by 
filing a complete first reply to a non-final Office action, thus 
assisting the Office in reducing pendency. Supplemental replies cause 
significant material delays in the examination and processing of

[[Page 53833]]

applications, and place a significant burden on the Office's resources. 
An examiner's workload is increased by a supplemental reply received 
after the examiner has already conducted an updated prior art search 
and drafted the next Office action in response to the first reply. 
Beyond the additional time to read and consider the supplemental reply, 
the examiner may need to redraft the next Office action and frequently 
may need to conduct a further search. Pendency of the application is 
also increased when a first complete reply is filed to toll the period 
for reply and then a supplemental reply is filed beyond the statutory 
period set forth in the non-final Office action. Applicants are 
therefore strongly encouraged to file a reply to an Office action that 
represents a thorough consideration of all pending claims, the art of 
record, and the preceding Office action, and as well represents the 
full communication between applicants, any assignees and any legal 
representative mailing the reply. This would greatly reduce the need to 
file a supplemental reply. A single reply, absent supplements, would 
save examiners' time on rework. Cross-mailings between a new Office 
action and any supplemental reply would be significantly reduced. 
Applicant's patent term adjustment reductions (under Sec.  1.704(c)(8)) 
would also be minimized, and the Office would save processing time and 
resources on patent term adjustment calculations. The changes to Sec.  
1.111(a)(2) would affect a very small percentage of applicants because 
only about 5.6% of all applications have one or more supplemental 
amendments. These supplemental amendments do, however, represent a 
significant burden on the Office from a small group of applicants. The 
burden would be effectively reduced by the instant proposed change.
    After filing a reply to a non-final Office action, applicants would 
not be able in a supplemental reply, as a matter of right, to: (1) 
Further amend any claims; (2) add new claims; (3) reinstate previously 
canceled claims; (4) present evidence; or (5) submit arguments. The 
Office may enter any supplemental reply that is filed before the 
expiration of the statutory period (i.e., within six months from the 
mailing date of the non-final Office action) if the supplemental reply 
is limited to: (1) Cancellation of a claim(s); (2) adoption of an 
examiner suggestion(s); or (3) placement of the application in 
condition for allowance. Any supplemental reply filed after the 
expiration of the statutory period would not be entered even if the 
supplemental reply meets one of the conditions since such reply would 
not be evaluated for entry. IDSs, or supplemental IDSs are not 
considered replies except when they are submitted pursuant to a 
requirement under Sec.  1.105. IDSs filed with a non-compliant 
supplemental reply would be considered separately according to the 
requirements of Sec. Sec.  1.97 and 1.98.
    The proposed amendment to Sec.  1.111(a)(2) would replace the 
procedures currently set forth in Sec.  1.111(a)(2). The current 
disapproval procedures were meant to provide the Office with latitude 
to refuse entry of supplemental replies that unduly interfere with the 
preparation of an Office action. See Changes to Implement the Patent 
Business Goals, 65 FR 54604 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 
77 (Sept. 19, 2000). The disapproval procedures, however, did not 
address the pendency problems associated with first supplemental 
replies. The Office receives a significantly larger number of first 
supplemental replies than second (or subsequent) supplemental replies. 
Furthermore, the procedures for disapproving a second (or subsequent) 
supplemental reply are too time consuming for examiners and Office 
technical support staff. The proposed amendment to Sec.  1.111(a)(2) 
would provide a single simplified procedure for handling all 
supplemental replies, which would reduce processing delays and save 
Office resources.
    If a supplemental reply is denied entry, such reply would be 
assigned a paper number and placed in the application file, with no 
further action taken. To have any of the arguments or amendments 
contained in an unentered supplemental reply considered by the 
examiner, applicants may request the entry of the supplemental reply, 
or resubmit the contents of supplemental reply, in a proper reply to 
the next Office action, if the next Office action is a non-final 
action. If the next Office action is a final rejection or a notice of 
allowance, applicants may file a request for continued examination 
(RCE) in compliance with Sec.  1.114 (i.e., a request accompanied by a 
submission and a fee) and request the entry of the supplemental reply, 
or resubmit the contents of such reply, in the RCE submission, to have 
such reply considered by the examiner. If an RCE is filed after a final 
Office action, to have a previously filed supplemental reply 
considered, the RCE must be accompanied by a reply to the outstanding 
Office action. See Sec.  1.114(c).
    If an applicant cannot file a first reply to a non-final Office 
action that is to his or her satisfaction (e.g., an affidavit is being 
prepared under Sec.  1.131), applicant may consider filing a continuing 
application, such as a continuation application under Sec.  1.53(b) (as 
an RCE would not be permitted because the Office action is non-final, 
see Sec.  1.114(b)).
    A supplemental reply would be entered if it is filed within the 
period during which action by the Office is suspended under Sec.  
1.103(a) through (c). If a supplemental reply is filed during a 
suspension of action that was granted by the Office for a petition, 
with a showing of good and sufficient cause for suspension, the 
supplemental reply would be entered. For example, if test data is 
required to overcome a rejection under 35 U.S.C. 103(a) and the 
applicant needs more time to conduct an experiment and collect the test 
data, the applicant may file a first reply to the Office action (as the 
Office will not grant a suspension of action if there is an outstanding 
Office action awaiting a reply by the applicant) and a petition for 
suspension of action with a showing of good cause under Sec.  1.103(a). 
If the suspension is granted by the Office, applicant may submit the 
test data in a supplemental reply during the suspension period. In 
addition, if an applicant is filing an RCE after a final rejection 
accompanied by a reply to the final Office action and needs more time 
to prepare a supplemental reply (e.g., an affidavit), applicant may 
consider filing a request for suspension of action under Sec.  1.103(c) 
with the RCE. The proposed Sec.  1.111(a)(2)(ii) would permit the 
affidavit (which is supplemental to the reply to the final Office 
action) to be entered. A supplemental reply, however, would not be 
entered if it is filed during a suspension of action initiated by the 
Office under Sec.  1.103(e).
    The proposed amendment to Sec.  1.111(a)(2) would not change the 
impact of the submission of a supplemental reply on patent term 
adjustment, in that the submission of any supplemental reply will cause 
a reduction of any accumulated patent term adjustment under Sec.  
1.704(c)(8).
    Section 1.115: Section 1.115 is proposed to be amended by adding a 
new paragraph (b) to treat all preliminary amendments filed on or prior 
to (where a filing date being accorded application papers is later than 
the original receipt date of the application papers) the application 
filing date as being part of the original disclosure. Current 
paragraphs (b) and (c) of Sec.  1.115 would be redesignated (c) and 
(d), respectively. If a preliminary amendment is determined to contain 
matter not otherwise included in the

[[Page 53834]]

contents of the originally filed specification, including claims, and 
drawings, and the preliminary amendment is not specifically referred to 
in the oath or declaration under Sec.  1.63, a new oath or declaration 
in compliance with Sec.  1.63 and referencing such preliminary 
amendment(s) will be required. Further, the Office proposes to amend 
current section 1.115(b)(1), as proposed new paragraph (c)(1)(i), to 
allow the Office to disapprove entry of any amendment, whether 
submitted prior to, on or after the filing date of an application, 
which seeks cancellation of all claims without presenting any new or 
substitute claims, except that the Office would treat a preliminary 
amendment canceling all of the claims and presenting no new or 
substitute claims procedurally as preserving a claim (the first 
independent claim) for filing and fee calculation purposes only.
    Preliminary Amendment Submitted on or Prior to the Filing Date as 
Part of the Original Disclosure: It has long been the practice that a 
preliminary amendment filed on or prior to the filing date of an 
application may be considered a part of the original disclosure if it 
is referred to in a first filed oath or declaration in compliance with 
Sec.  1.63. The first filed oath or declaration may have been filed 
prior to, on or after the application filing date. If the preliminary 
amendment is not referred to in the oath or declaration, any request to 
treat the preliminary amendment as a part of the original disclosure is 
by way of petition under Sec.  1.182 requesting that the original oath 
or declaration be disregarded and that the application be treated as an 
application filed without an executed oath or declaration under Sec.  
1.53(f). Any such petition must be accompanied by the $130.00 petition 
fee, a newly executed oath or declaration (which identifies the 
application and refers to the preliminary amendment), and the requisite 
surcharge under Sec.  1.16(e).
    All application papers, including preliminary amendments, located 
in the application file on the application filing date are currently 
scanned by the Office of Initial Patent Examination (OIPE) into an 
electronic image format. Therefore, the treatment of a preliminary 
amendment as being part of the original disclosure by the newly 
proposed practice of automatically treating all preliminary amendments 
filed on or prior to the filing date of an application as being part of 
the original disclosure would add no additional scanning work to OIPE. 
The proposed practice, however, would provide a consistent way of 
treating preliminary amendments and eliminate the need for filing a 
petition. As a result, valuable processing time would be saved. No 
change in practice is contemplated regarding inclusion of preliminary 
amendments in a published application, as only preliminary amendments 
submitted by EFS (electronic system for submitting patent applications) 
will be included in a published application. See Sec.  1.215(c).
    A preliminary amendment seeking cancellation of all claims, but not 
presenting any new or substitute claims, would be part of the original 
disclosure, but would be entered only in part in conformance with the 
practice set forth below.
    All preliminary amendments filed on or prior to the filing date of 
an application are proposed to be treated as part of the original 
disclosure. These preliminary amendments would be entered into the 
application. Thereafter, the application, including the preliminary 
amendments, would be forwarded to an examiner for examination in due 
course. During examination, the examiner would make a determination as 
to whether the preliminary amendments contain matter not in the 
originally filed specification, including claims and any drawings. If 
the examiner determines that the preliminary amendments filed on or 
prior to the filing date of an application contains only subject matter 
disclosed in the contents of the originally filed specification, 
including claims and any drawings, no reference to the preliminary 
amendments in the oath or declaration would be necessary and, thus, 
would not be required. If, however, it is determined by the examiner 
that the amendments filed on or prior to the filing date of an 
application do contain matter not in the originally filed 
specification, including claims and any drawings, and the preliminary 
amendments are not referred to in a first filed oath or declaration (or 
a later submitted one), then a new oath or declaration in compliance 
with Sec.  1.63 and referencing such preliminary amendment(s) would be 
necessary and, thus, would be required by the examiner. The oath or 
declaration filed in such an application must identify the preliminary 
amendment adding matter not in the originally filed specification, 
including claims and any drawings as one of the papers which the 
inventor(s) has ``reviewed and understands'' in order to comply with 
Sec.  1.63(b)(2) (the surcharge under Sec.  1.16(e) would not be 
required).
    Preliminary amendments filed after the filing date of an 
application are not considered as part of the original disclosure and 
are not subject to a determination of whether the preliminary 
amendments must be referred to in an oath or declaration (if they 
contain subject matter not disclosed in the contents of the originally 
filed specification, including claims and any drawings) but will be 
reviewed by the examiner for new matter. Preliminary amendments filed 
prior to or on the filing date of the application by definition cannot 
contain new matter whether or not they are referred to in a first filed 
oath or declaration because they would be considered part of the 
application as originally filed.
    The appropriate provisions of the MPEP will be modified 
accordingly, if the proposed amendment to Sec.  1.115 is adopted.
    It is recognized that the requirement for a new oath or declaration 
when the originally filed application papers include preliminary 
amendments which have been determined by an examiner to contain matter 
not in the originally filed specification, including claims and any 
drawings and are not referred to in the originally filed oath or 
declaration (or a later submitted one) may present a hardship in 
acquiring the requisite signatures of all the inventors. The treatment, 
however, of such a preliminary amendment as being part of the original 
disclosure and the elimination of the current petition practice are 
believed to outweigh such hardship.
    A good practice to follow, when at all possible, is to refer to all 
preliminary amendments filed on or prior to the filing date of an 
application, in an oath or declaration filed under Sec.  1.63 whenever 
the oath or declaration is first filed. Following this practice will 
avoid the necessity for filing a new oath or declaration referencing 
the preliminary amendments.
    It should be noted that no oath or declaration filed under Sec.  
1.63 would be determined to be defective under this section if it makes 
reference to a preliminary amendment filed on or prior to the filing 
date of an application, which is determined by the Office to contain 
only subject matter disclosed in the contents of the originally filed 
specification, including claims and any drawings.
Preliminary Amendment Filed Prior to the Filing Date of an Application
    Example A: An example of a preliminary amendment filed prior to the 
filing date of an application is a preliminary amendment filed with the 
original application papers, wherein the original application papers 
did not include a specification in compliance

[[Page 53835]]

with 35 U.S.C. 112. Accordingly, the application papers, as filed, were 
not entitled to a filing date under 35 U.S.C. 111(a)(2)(A). Thereafter, 
a specification in compliance with 35 U.S.C. 112 was filed in the 
application, and the application was entitled to a filing date as of 
the date of submission of the specification in compliance with 35 
U.S.C. 112.
Preliminary Amendment Not Desired To Be Part of the Original Disclosure
    Example B1: If a preliminary amendment is not desired to be a part 
of the original disclosure, then such preliminary amendment must be 
filed in the application on a date later than the application filing 
date. Such a situation could occur if a practitioner drafts a 
preliminary amendment, which he believes contains only subject matter 
disclosed in the contents of the originally filed specification, 
including claims and any drawings, after a declaration was signed by 
all the inventors executing the application papers without the 
preliminary amendment being before them and it would be very difficult 
to obtain a new oath or declaration in compliance with Sec.  1.63 
executed by all the inventors referring to the preliminary amendment.
    Example B2: Where it is determined by an examiner that a 
preliminary amendment filed on or prior to the filing date of an 
application (including an executed declaration) contains additional 
subject matter not disclosed in the contents of the originally filed 
specification, including claims and any drawings, a practitioner may 
determine that the preliminary amendment does not need to be a part of 
the original disclosure (e.g., to support the particular invention 
being claimed) and therefore it would be easier to cancel the 
preliminary amendment rather than obtain a new oath or declaration in 
compliance with Sec.  1.63 executed by all the inventors referring to 
the preliminary amendment.
Preliminary Amendment Adding a Benefit Claim to a Prior Application
    Example C1: An application was filed under Sec.  1.53(b) as a 
continuation application of a prior filed (parent) application 
including a specification (including claims) and drawings updated with 
all desired amendments (without adding any new matter (Sec.  
1.63(d)(1)(iii))) from a prior filed (parent) application, a copy of a 
signed declaration used in the prior application (Sec.  
1.63(d)(1)(iv)), and a preliminary amendment adding a benefit claim. 
The preliminary amendment adds only a specific reference to the prior 
filed (e.g., parent) application to the first line of the 
specification. As the preliminary amendment was submitted on filing, it 
is part of the original disclosure. Question: Does the oath or 
declaration need to refer to this preliminary amendment? Answer: No. As 
the application submitted on filing is an updated version of the 
specification of the prior application (without adding new matter) 
including the benefit claim, the oath or declaration does not need to 
include a reference to the preliminary amendment. Thus, the preliminary 
amendment is not adding additional subject matter not disclosed in the 
contents of the originally filed specification of the continuation 
application, including claims and drawings.
    Example C2: In addition to the facts set forth in Example C(1), the 
specification submitted on filing inadvertently omitted a copy of page 
5 of the specification, however, the transmittal letter (PTO/SB/05) 
submitted on filing stated the following:
    For CONTINUATION OR DIVISIONAL APPS only: The entire disclosure of 
the prior application, from which an oath or declaration is supplied 
under Box 5b, is considered a part of the disclosure of the 
accompanying continuation or divisional application and is hereby 
incorporated by reference. The incorporation can only be relied upon 
when a portion has been inadvertently omitted from the submitted 
application parts.
    Thereafter, the omitted page 5 from the prior application, that was 
intended to be submitted with the new application on filing but was 
not, is then submitted. Question: Is a new oath or declaration 
required? Answer: No. While the continuation application did not 
include all the subject matter of the prior application which was 
intended to be submitted on filing, the application did include a 
limited incorporation by reference. See MPEP Sec.  201.06(c). As the 
material of page 5 of the prior application was inadvertently omitted 
on filing, the incorporation by reference would permit the entry of the 
subject matter of page 5 of the prior application into the continuation 
application. See also proposed Sec.  1.57(a).
Preliminary Amendment Adding New Matter to a Continuation Application
    Example D: An application was filed under Sec.  1.53(b) as a 
continuation application of a prior filed (parent) application 
including an updated specification (including claims) and drawings from 
a prior filed (parent) application, a copy of the signed declaration 
from the prior application, and a preliminary amendment. The 
preliminary amendment included a benefit claim and also a new matter 
amendment of the specification, which new matter was not disclosed in 
the contents of the originally filed specification, including claims 
and drawings. As the preliminary amendment was submitted on filing, it 
is part of the original disclosure. Question: Does the oath or 
declaration need to refer to this preliminary amendment? Answer: Yes. 
As the application includes new matter, the application cannot be a 
continuation application. The application is a continuation-in-part 
application. An examiner would equire that the application be 
redesignated as a continuation-in-part application, and require a new 
oath or declaration in compliance with Sec.  1.63 and referencing the 
preliminary amendment(s).
    The Office is particularly interested in comments from our 
customers regarding whether the benefits of the proposed change in 
Office policy (elimination of the current petition practice and 
treatment of preliminary amendments filed on or prior to the filing 
date of an application as part of the original disclosure) outweighs 
the attendant hardship (reexecution of the oath or declaration).
    This change to Sec.  1.115 would not be retroactive to any 
applications filed before the effective date of the rule change. The 
proposed change would be prospective only since to apply the change 
retroactively would result in changing the expectations regarding 
treatment of preliminary amendments filed on or prior to the filing 
date of an application by the Office.
    Preliminary Amendment Cancelling All Claims: Current paragraph (b) 
of Sec.  1.115 is proposed to be redesignated as paragraph (c) based on 
the above new proposed paragraph (b) and would be reformatted to 
accommodate the addition of new paragraph (c)(1)(i) as is being 
proposed to treat a preliminary amendment seeking to cancel all claims.
    Before June of 1998, it was the practice of the Office to treat an 
application filed with an amendment (preliminary amendment) canceling 
all of the claims and presenting no new or substitute claims by denying 
entry of the amendment. See MPEP Sec. Sec.  711.01 and 714.19. In  
Baxter Int'l Inc. v. McGaw Inc., 149 F.3d 1321, 47 USPQ2d 1225 (Fed. 
Cir. 1998), the Federal Circuit held that a divisional application that 
included instructions to cancel all of the claims in the specification, 
without presenting any new claims, and did not contain at least one 
claim as required by 35 U.S.C. 112,

[[Page 53836]]

] 2, was not entitled to a filing date under 35 U.S.C. 111(a) until the 
date an amendment including at least one claim was filed in the 
application. Following Baxter, the Office changed its practice and no 
longer accorded a filing date to any application that was accompanied 
by a preliminary amendment which canceled all claims and failed to 
simultaneously submit any new claims. See Any Application Filed With 
Instructions to Cancel All of the Claims in the Application is Not 
Entitled to a Filing Date, 1216 Off. Gaz. Pat. Office 46 (Nov. 10, 
1998).
    Subsequently, in Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 
1249, 60 USPQ2d 1368 (Fed. Cir. 2001), the Federal Circuit affirmed 
that the Office may refuse to enter an improper amendment that would 
cancel all of the claims in an application to avert harm (loss of a 
filing date) to an applicant. The Federal Circuit distinguished its 
decision in Baxter since in Baxter the Office did enter the amendment 
that canceled all of the claims in the application, thus resulting in 
the application not being entitled to a filing date. In contrast, in 
Exxon the Office refused to enter the amendment cancelling all the 
claims. The Office did, however, cancel all the dependent claims and 
preserve one claim for filing purposes only. Thus, all the claims were 
never canceled.
    Consistent with Exxon Corp. v. Phillips Petroleum Co. and MPEP 
Sec. Sec.  711.01 and 714.19, paragraph (H), (8th ed. 2001), the Office 
would disapprove entry of any amendment (whether submitted prior to, on 
or after the filing date of the application) that seeks cancellation of 
all claims but does not present any new or substitute claims. For 
filing purposes, that is, fee calculation purposes, the Office would 
treat such an application as containing a single claim, which would be 
the first independent claim, claim 1, wherein such claim would be the 
only claim that would be considered part of the original disclosure. 
See Example A above for an illustration of a preliminary amendment 
filed prior to the filing date of an application.
    The proposed amendment to Sec.  1.115(c)(1) would be a codification 
of the Office's current practice as set forth in MPEP Sec. Sec.  711.01 
and 714.19, paragraph (H). In addition, the provision in MPEP Sec.  
601.01(e) concerning the treatment of a nonprovisional application 
accompanied by a preliminary amendment which cancels all claims and 
fails to simultaneously submit any new claim(s) would be revised to be 
in conformance with current practice. See Treatment of Amendments that 
if Entered Would Cancel All of the Claims in an Application, 1255 Off. 
Gaz. Pat. Office 827 (Feb. 5, 2002).
    This change to Sec.  1.115 (if adopted) would apply to any 
applications filed before the effective date of the rule change, as it 
is a codification of current Office practice.
    Section 1.116: Section 1.116(b) is proposed to be revised to make 
it clear that the reexamination proceeding is not terminated under 
Sec. Sec.  1.550(d) or 1.957(b), but rather the prosecution of the 
reexamination is concluded under Sec. Sec.  1.550(d) or 1.957(b). See 
the discussion below as to the amendment of Sec.  1.550 for the 
rationale for this change. See also Sec. Sec.  1.502, 1.570, 1.902, 
1.953, 1.957, 1.958, 1.979, and 1.997.
    It is further proposed that Sec.  1.116(b) be revised to more 
appropriately set forth the Sec.  1.957(c) consequences of a failure to 
respond in an inter partes reexamination. The inter partes 
reexamination prosecution is neither terminated nor concluded where the 
patent owner fails to timely respond to an Office action, and claims in 
the proceeding remain patentable. Rather, an Office action is issued to 
thereby permit the third party requester to challenge the claims found 
patentable.
    Section 1.131: Section 1.131(b) is proposed to be amended for 
correction of a typographical error that was inadvertently introduced 
in the final rule Miscellaneous Amendments of Patent Rules, 53 FR 23728 
(June 23, 1988) (final rule). The typographical error to be corrected 
is contained in the text at the end of the second (and last) sentence 
of Sec.  1.131(b), which pertains to exhibits or records needed to 
substantiate an oath or declaration of prior invention swearing behind 
a reference applied in a rejection of a claim. Specifically, the text 
``of their absence satisfactorily explained'' should read ``or their 
absence satisfactorily explained'' (emphasis added). Thus, Sec.  
1.131(b) would be amended to clarify that for any oath or declaration 
under Sec.  1.131 lacking original exhibits of drawings or records in 
support thereof, the absence of such original exhibits of drawings or 
records must be satisfactorily explained.
    Section 1.136: Section 1.136(b) is proposed to be amended to add a 
petition fee requirement. Paragraph 1.136(a)(2), for example, 
specifically refers to Sec.  1.136(b) for extensions of time to file 
replies under Sec. Sec.  1.193(b), 1.194, 1.196 or 1.197 after a notice 
of appeal is filed. For such replies on appeal Sec.  1.136(a) is not 
available for extending the time period for reply, and applicants may 
be able to make the Sec.  1.136(b) ``sufficient cause'' showing. To 
evaluate whether a showing of ``sufficient cause'' exists, decisions on 
Sec.  1.136(b) requests require a thorough evaluation of facts and 
circumstances on a case-by-case basis. Furthermore, requests under 
Sec.  1.136(b) are generally treated expeditiously by the deciding 
official. At MPEP Sec.  710.02(e), it is recommended that requests 
under Sec.  1.136(b) be filed in duplicate with a stamped return-
address envelope to assist the Office in processing these requests with 
special dispatch. To reflect the Office's cost of deciding requests 
under Sec.  1.136(b), it is proposed that a requirement for a petition 
fee be added to Sec.  1.136(b). Evaluation of a request for an 
extension of time under Sec.  1.136(b) for sufficient cause is 
analogous to evaluation of a request for the Office to suspend action 
for sufficient cause pursuant to Sec.  1.103(a). See discussion of 
Sec.  1.17.
    Section 1.137: Sections 1.137(a), (b) and (e) are proposed to be 
amended to clarify that the reexamination proceedings under Sec.  
1.957(c) referred to in Sec. Sec.  1.137(b) and (c) are ``limited as to 
further prosecution.'' Section 1.137(d) is also proposed to be amended 
to clarify that when reviving a reissue application pursuant to Sec.  
1.137 a terminal disclaimer is not required.
    Sections 1.137(a), (b) and (e) are proposed to be amended to more 
appropriately set forth the consequences of a failure to respond when 
governed by Sec.  1.957(c). An inter partes reexamination prosecution 
is neither terminated nor concluded where the patent owner fails to 
timely respond to an Office action and claims in the proceeding remain 
patentable. An Office action is issued instead to thereby permit the 
third party requester to challenge the claims found patentable. As set 
forth in Sec.  1.957(c), ``[i]f claims are found patentable and the 
patent owner fails to file a timely and appropriate response to any 
Office action in an inter partes reexamination proceeding, further 
prosecution will be limited to the claims found patentable at the time 
of the failure to respond, and to any claims added thereafter which do 
not expand the scope of the claims which were found patentable at that 
time.'' The proposed revision refers accordingly to ``revival'' of an 
inter partes reexamination prosecution which has been ``limited'' under 
Sec.  1.957(c).
    Section 1.137(d)(3) is proposed to be amended to clarify that the 
terminal disclaimer requirements of paragraph (d)(1) do not apply to 
reissue applications.
    Pursuant to 35 U.S.C. 251, a patent is reissued ``for the unexpired 
part of the term of the original patent.'' Hence, any

[[Page 53837]]

period of abandonment of a reissue application, should the reissue 
application become revived and serve to reissue the patent, will result 
in a loss of patent term for the period that the reissue application 
was abandoned. Accordingly, there is no need to impose an additional 
penalty on patentee to terminally disclaim the entire period of 
abandonment of a reissue application. This rationale accords with the 
exclusion of the terminal disclaimer requirement when petitioning for 
revival of nonprovisional applications filed on or after June 8, 1995, 
pursuant to Sec.  1.137(d)(1).
    Current Office practice does not require a terminal disclaimer as a 
condition precedent for revival of an abandoned reissue application, no 
matter when the application was filed, where revival is otherwise 
appropriate.
    In order to codify current practice, Sec.  1.137(d)(3) is proposed 
to be amended by inserting ``to reissue applications'' to provide a 
blanket exception for reissue applications. Regardless of when the 
reissue application was filed, applicant is not required to file an 
accompanying terminal disclaimer with a petition to revive under Sec.  
1.137.
    Section 1.165: Section 1.165(b) is proposed to be amended to remove 
the requirement for a black and white copy of a color drawing or 
photograph. This requirement has already been waived. See Interim 
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement 
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of 
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
    Section 1.173: Section 1.173(b) is amended to clarify that 
paragraphs (b)(1), (b)(2) and (b)(3) are directly related to, and 
should be read with, paragraph (b).
    Section 1.175: Section 1.175 is proposed to be amended by adding a 
new paragraph (e) requiring a new oath or declaration for continuing 
reissue applications, which must identify an error not corrected in an 
earlier reissue application.
    Section 1.175 is currently interpreted to require any continuing 
reissue application whose parent application has not been abandoned to 
include an oath or declaration identifying at least one error being 
corrected, which error is different from the error(s) being corrected 
in the parent reissue (or an earlier reissue). Ordinarily, a single 
reissue application is filed to replace a single original patent and 
corrects all of the errors recognized by the applicant at the time of 
filing of the (single) reissue. If, during the prosecution of the 
reissue application, applicant (patentee) recognizes additional errors 
needing correcting, such corrections could, and should, be made in the 
same application. If, however, after the close of prosecution and up 
until the time that the first reissue issues, applicant recognizes a 
further error which needs correction and files a continuing reissue 
application, Sec.  1.175(e) would now explicitly require applicant to 
include an oath or declaration which identifies an error which was not 
corrected in the parent reissue application or in an earlier reissue 
application, e.g., a grandparent reissue application.
    Section 1.178: Section 1.178 is proposed to be amended to eliminate 
the requirement for physical surrender of the original letters patent 
(i.e., the ``ribbon copy'' of the original patent) in a reissue 
application, and to make surrender of the original patent automatic 
upon the grant of the reissue patent. The reissue statute provides in 
part that:

    Whenever any patent is, through error without any deceptive 
intention, deemed wholly or partly inoperative or invalid, by reason 
of a defective specification or drawing, or by reason of the 
patentee claiming more or less then he had a right to claim in the 
patent, the Director shall, on the surrender of such patent and the 
payment of the fee required by law, reissue the patent for the 
invention disclosed in the original patent, and in accordance with a 
new and amended application, for the unexpired part of the term of 
the original patent.

    See 35 U.S.C. 251, ] 1 (emphasis added).
    While the statutory language requires a ``surrender'' of the 
original patent, it does not require a physical surrender of the actual 
letters patent, nor even a statement that the patent owner surrenders 
the patent. Physical surrender by submission of the letters patent 
(i.e., the copy of the original patent grant) is currently required by 
rule via Sec.  1.178; however, such submission is only symbolic, since 
the patent right exists independently of physical possession of the 
letters patent.
    It is the right to the original patent that must be surrendered 
upon grant of the reissue patent, rather than any physical document. 
Thus, where the letters patent is not submitted during the prosecution 
of the reissue application because it is stated in the reissue that the 
letters patent copy of the patent is lost or inaccessible, there is no 
evidence that any stigma is attached to the reissue patent by the 
public. Further, there is no case law treating such a reissue patent 
adversely due to the failure to submit the letters patent. In fact, 
there is no legal reason to retain the requirement for physical 
surrender of the letters patent. On the other hand, there is much 
benefit for eliminating the requirement for physical surrender of the 
letters patent.
    It would be beneficial to both the Office and the public to 
recognize and provide that the surrender of the original patent is 
automatic upon the grant of the reissue patent to thereby eliminate the 
requirement for a physical submission of the letters patent, and to 
eliminate even the need for filing a paper offering to physically 
surrender the letters patent (Sec.  1.178(a)).
    The current requirement for submission of the patent document 
requires the patent owner (seeking reissue) to try to obtain the 
letters patent copy of the patent. If the document was lost or 
misplaced, the patent owner must search for it. If it is in the hands 
of a former employee, the patentee must make an effort to secure it 
from that employee (who might not be on friendly terms with the 
patentee). If the letters patent can be obtained, it must then be 
physically submitted without losing or destroying it. If the letters 
patent cannot be obtained, the patent owner must make a statement of 
loss (Form PTO/SB/55) or explain that it cannot be obtained from the 
party having physical possession of it. The proposed revision of Sec.  
1.178 would eliminate these burdens, and the requirement for use of 
form PTO/SB/55 or its equivalent.
    At present, the requirement for submission of the letters patent 
copy of the patent provides an unnecessary drain on Office processing 
and storage resources in dealing with the submitted letters patent 
document. Further, in the event the reissue is not granted, the Office 
must return the letters patent to the applicant where such is 
requested. The proposed revision would do away with the burden on the 
Office of processing, storing, and returning letters patent.
    The current requirement for submission of the original patent (the 
letters patent), or a statement as to its loss, results in a ``built 
in'' delay in the prosecution while the Office awaits submission of the 
letters patent or the statement of loss, which is often submitted only 
after an indication of allowance of claims. The proposed revision would 
reduce reissue application pendency, since the Office would no longer 
need to delay prosecution while waiting for the letters patent or the 
statement of loss.
    As a final point, the complete elimination of the requirement for 
an affirmative act (of surrender) by the patent owner would put reissue 
in step with other post patent proceedings for change of patent which 
have no

[[Page 53838]]

requirement for even a statement of surrender (e.g., reexamination 
certificate, certificate of correction).
    Section 1.179: Section 1.179 would be removed and reserved as no 
longer being necessary. The information provided by this rule, i.e., 
notification to the public in the patent file that a reissue 
application has been filed for a particular patent, is now available 
through other means, such as public PAIR on the Office's Internet home 
page. This source of information can be entered through the Office's 
Internet Web site at http://pair.uspto.gov/cgi-bin/final/home.pl 
wherein the user can enter the original patent number, click on 
``Search,'' and then click on ``Continuity Data.'' Any post-issuance 
filings (e.g., reissues, reexamination proceedings) will be identified 
by scrolling to ``Child Continuity Data.'' To identify an application 
under ``Child Continuity Data'' as a reissue, the user simply clicks on 
the desired application number and searches through the file contents 
screen for ``Notice of Reissue Published in Official Gazette.'' The 
Patent Assistance Center (PAC) Helpdesk (telephone number: 800-786-
9199) can also provide information to the public on reissue filings. 
Removal of the provision that the Office place a separate paper in the 
patent file stating that a reissue has been filed would therefore 
eliminate several processing steps within the Office and contribute to 
overall efficiency. Similarly, public PAIR will indicate termination of 
the reissue examination, and placing a second separate paper notice to 
that effect in the patent file would be unnecessary.
    The Office, through recent rule changes, has removed other language 
directed solely to internal instructions or directions to itself, and 
which do not directly impact patent applicants or the public. See, 
e.g., Changes to Implement the Patent Business Goals, 65 FR 54603, 
54644, 54676 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77 (Sept. 19, 
2000) (revised Sec.  1.176 to eliminate instructions providing for a 
two-month delay of examination following the notice of reissue filing 
in the Official Gazette). Additionally, Office personnel can internally 
through the PALM database access information regarding reissue filings 
and do not rely on the presence or absence of the notice in the patent 
file as determinative of reissue status.
    Section 1.182: Section 1.182 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(f) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.183: Section 1.183 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(f) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.213: Section 1.213(a) is proposed to be amended to add a 
provision that the certification under Sec.  1.213(a)(3) is not 
appropriate unless the person signing the request has made an actual 
inquiry consistent with the requirements of Sec.  10.18(b) of this 
chapter with respect to the application to which the request and 
certification pertains to determine that: (1) The application has not 
been the subject of an application filed in another country, or under a 
multilateral international agreement, that requires publication of 
applications at eighteen months after filing; and (2) the applicant's 
intent at the time the nonpublication request is being filed is that 
the application will not be the subject of an application filed in 
another country, or under a multilateral international agreement, that 
requires publication of applications at eighteen months after filing. 
The Office has received inquiries which make it apparent that a number 
of practitioners consider a certification under 35 U.S.C. 
122(b)(2)(B)(i) and Sec.  1.213(a) appropriate so long as the applicant 
has not filed, and has not yet made a decision whether to file, a 
counterpart application in a foreign country, or under a multilateral 
international agreement, that requires publication of applications at 
eighteen months after filing (``a counterpart application subject to 
eighteen-month publication''). Thus, Sec.  1.213(a) is proposed to be 
amended to more clearly place persons signing nonpublication requests 
under Sec.  1.213(a) on notice as to what a certification under 35 
U.S.C. 122(b)(2)(B)(i) and Sec.  1.213(a) entails.
    A nonpublication request must contain a certification that ``the 
invention disclosed in the application has not and will not be the 
subject of an application filed in another country, or under a 
multilateral international agreement, that requires publication of 
applications 18 months after filing'' (emphasis added). See 35 U.S.C. 
122(b)(2)(B)(i). A certification under 35 U.S.C. 122(b)(2)(B)(i) and 
Sec.  1.213(a) is not appropriate unless the applicant's intent at the 
time the nonpublication request is being filed is not to file a 
counterpart application that would be subject to eighteen-month 
publication for the particular application with which the 
nonpublication request is filed. That is, the applicant must have an 
affirmative intent not to file a counterpart application that would be 
subject to eighteen-month publication, and not just the absence of any 
intent or plan concerning the filing of any counterpart application 
that would be subject to eighteen-month publication. In addition, a 
certification on the basis of a lack of knowledge of the applicant's 
plans concerning the filing of any counterpart application that would 
be subject to eighteen-month publication or the applicant's past 
practices or tendencies with respect to the filing of foreign 
counterpart applications would not meet the requirement that the person 
signing the request make an ``actual inquiry'' ``with respect to the 
application to which the request and certification pertains.'' 
Obviously, that a particular applicant has a tendency to file 
counterpart applications for fewer than fifty percent of its U.S. 
applications is not alone an adequate basis for filing all or any of 
the U.S. applications with a nonpublication request under Sec.  
1.213(a).
    Section 1.213(b) (and Sec.  1.213(c)) is proposed to be amended to 
incorporate into the rules of practice the Office's interpretation of 
the interplay between the provision in 35 U.S.C. 122(b)(2)(B)(ii) for 
rescission of a previously filed nonpublication request and the notice 
requirement of 35 U.S.C. 122(b)(2)(B)(iii). The Office published a 
notice advising practitioners that the requirement in 35 U.S.C. 
122(b)(2)(B)(iii) (and Sec.  1.213(c)) for a notice of the foreign 
filing is in addition to any rescission of the nonpublication request 
under 35 U.S.C. 122(b)(2)(B)(ii) (and Sec.  1.213(b)). See Reminder 
that Rescission of a Nonpublication Request is Not Itself a Notice of 
Foreign Filing, 1270 Off. Gaz. Pat. Office 20 (May 6, 2003). The 
inquiries in response to that notice revealed that many practitioners 
were unaware of this information. These inquiries also revealed that 
many practitioners who filed a counterpart application subject to 
eighteen-month publication after filing a nonpublication request in a 
U.S. application rescinded the nonpublication request by filing a 
nonpublication request rescission form that did not also contain a 
foreign filing notice (in many situations because the foreign filing 
notice included on the Office pre-printed form was removed). In view of 
these inquiries, the Office published a notice further clarifying the 
Office's interpretation of the provisions of 35 U.S.C. 
122(b)(2)(B)(ii)-(iv). See Clarification of the United States Patent 
and Trademark Office's Interpretation of the Provisions of 35 U.S.C. 
122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003). 
Section 1.213(b) is specifically proposed to be amended to indicate 
that the mere filing of a

[[Page 53839]]

request under Sec.  1.213(b) to rescind a previously filed 
nonpublication request does not comply with the notice requirement of 
35 U.S.C. 122(b)(2)(B)(iii) and Sec.  1.213(c) (for applicants who 
submitted a nonpublication request under Sec.  1.213(a), but before 
filing the request under Sec.  1.213(b) to rescind the previously filed 
nonpublication request, also filed an application directed to the 
invention disclosed in the application in which the nonpublication 
request was submitted in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing). See Clarification of the United States 
Patent and Trademark Office's Interpretation of the Provisions of 35 
U.S.C. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office at 23. Section 
1.213(b) is also proposed to be amended to indicate that the provisions 
of Sec.  1.8 do not apply in determining whether such an application 
has been filed before filing a request under Sec.  1.213(b) to rescind 
a previously filed nonpublication request. See Clarification of the 
United States Patent and Trademark Office's Interpretation of the 
Provisions of 35 U.S.C. Sec.  122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. 
Pat. Office at 23-24.
    Section 1.213(b) is also proposed to be amended to provide that a 
request under Sec.  1.213(b) to rescind a nonpublication request is not 
appropriate unless the person signing the request has made an inquiry 
consistent with the requirements of Sec.  10.18(b) of this chapter and 
determined that a nonpublication request under Sec.  1.213(a) was 
previously filed in the application in which the request to rescind a 
nonpublication request is directed. A number of practitioners have 
developed the practice of filing a request under Sec.  1.213(b) to 
rescind a nonpublication request in all applications for which a 
counterpart application subject to eighteen-month publication is filed, 
regardless of whether a nonpublication request was filed in the 
application. Processing a request under Sec.  1.213(b) to rescind a 
nonpublication request in an application in which a nonpublication 
request was not previously filed in the application is burdensome on 
the Office. This is because the filing of a nonpublication request in 
an application for which a nonpublication request is not entered in the 
Office's computer system generally results in a search of the 
application file to determine whether the Office failed to record a 
nonpublication request in the Office's computer system. The filing of a 
request under Sec.  1.213(b) to rescind a nonpublication request in an 
application in which a nonpublication request was not previously filed 
is unwarranted and results in an unnecessary delay and a needless 
increase in the cost of processing the application. Thus, the Office 
considers this course of conduct to be in violation of Sec.  10.18(b). 
Therefore, the Office is proposing to amend Sec.  1.213(b) to place 
persons signing a request under Sec.  1.213(b) to rescind a 
nonpublication request on notice that such a request is not appropriate 
unless the person signing the request has made an inquiry consistent 
with the requirements of Sec.  10.18(b) of this chapter and determined 
that a nonpublication request under Sec.  1.213(a) was previously filed 
in the application in which the request to rescind a nonpublication 
request is directed. Practitioners who continue to engage in the 
practice of filing a request under Sec.  1.213(b) to rescind a 
nonpublication request in applications for which a nonpublication 
request was never filed may be subject to sanctions, disciplinary 
action, or both (see Sec. Sec.  10.18(c) and (d)).
    Section 1.213(c) is (as discussed above with respect to Sec.  
1.213(b)) proposed to be amended to incorporate into the rules of 
practice the Office's interpretation of the interplay between the 
provision in 35 U.S.C. 122(b)(2)(B)(ii) for rescission of a previously 
filed nonpublication request and the notice requirement of 35 U.S.C. 
122(b)(2)(B)(iii). Section 1.213(c) is specifically proposed to be 
amended to provide that an applicant who has submitted a nonpublication 
request under Sec.  1.213(a), but before filing a request under Sec.  
1.213(b) to rescind the previously filed nonpublication request, files 
an application directed to the invention disclosed in the application 
in which the nonpublication request was submitted in another country, 
or under a multilateral international agreement, that requires 
publication of applications eighteen months after filing, must notify 
the Office of such filing within forty-five days after the date of the 
filing in another country, or under a multilateral international 
agreement. Section 1.213(c) is also proposed to be amended to provide 
that the provisions of Sec.  1.8 do not apply in determining whether 
such an application has been filed before filing a request under Sec.  
1.213(b) to rescind a previously filed nonpublication request. Section 
1.213(c) is also proposed to be amended to provide that the mere filing 
of a request under Sec.  1.213(b) to rescind a previously filed 
nonpublication request does not comply with the notice requirement of 
35 U.S.C. 122(b)(2)(B)(iii) and Sec.  1.213(c). Section 1.213(c) is 
also proposed to be amended to recite ``of the filing in another 
country, or under a multilateral international agreement,'' rather than 
``of the filing of such foreign or international application'' to more 
accurately track the language of 35 U.S.C. 122(b)(2)(B)(iii).
    Section 1.213(d) is proposed to be added to provide that if an 
applicant who has submitted a nonpublication request under Sec.  
1.213(a), subsequently files a request under Sec.  1.213(b) to rescind 
a nonpublication request or files a notice of a filing in another 
country, or under a multilateral international agreement, under Sec.  
1.213(c), the application shall be published as soon as is practical 
after the expiration of a period of eighteen months from the earliest 
filing date for which a benefit is sought under title 35, United States 
Code. 35 U.S.C. 122(b)(2)(B)(iv) provides that if an applicant rescinds 
a request made under 35 U.S.C. 122(b)(2)(B)(i) or notifies the Director 
that an application was filed in a foreign country or under a 
multilateral international agreement specified in 35 U.S.C. 
122(b)(2)(B)(i), the application shall be published in accordance with 
the provisions of 35 U.S.C. 122(b)(1) on or as soon as is practical 
after the date that is specified in 35 U.S.C. 122(b)(2)(B)(i). 
Notwithstanding this provision in 35 U.S.C. 122(b)(2)(B), the Office 
has also received inquiries as to whether an application will be 
published if a request under Sec.  1.213(b) to rescind a nonpublication 
request or a notice of foreign or international filing under Sec.  
1.213(c) is filed.
    Section 1.215: Section 1.215(a) is proposed to be amended to permit 
submission of paper replacement drawings with a processing fee pursuant 
to Sec.  1.17(i) (to replace the requirement for a petition) within the 
same time frame as is being proposed in Sec.  1.215(c). Additionally, 
Sec.  1.215(c) is proposed to be amended to provide a time frame of one 
month from the mailing date of the first Office communication that 
includes a confirmation number for the application for the submission 
of an amended version of an application through EFS (as well as 
providing the same time frame for replacement drawings submitted 
pursuant to Sec.  1.215(a)).
    Section 1.215(a) is proposed to be amended to refer to the 
processing fee set forth in Sec.  1.17(i), and to provide that paper 
replacement drawings received before the Office has begun to process 
the patent application publication will be included in any patent 
application

[[Page 53840]]

publication. Replacement paper drawings may currently be included in 
any patent application publication, so long as the drawings are 
accompanied by a petition under Sec.  1.182 and a petition fee set 
forth in Sec.  1.17(h) and are timely received. Deletion of the 
requirement for a petition and replacement of the petition fee set 
forth in Sec.  1.17(h) with a processing fee set forth in Sec.  1.17(i) 
will reduce burdens upon applicants, while retaining the ability of the 
Office to recover the costs associated with processing the replacement 
drawings that have not been required by the Office. See Drawings in 
Patent Application Publications and Patents, 1242 Off. Gaz. Pat. Office 
114 (Jan. 16, 2001).
    Section 1.215(c) is proposed to be amended to provide that 
applicant has until the later of: (1) A month after the mailing date of 
the first Office communication that includes a confirmation number for 
the application; or (2) fourteen months after the earliest filing date 
claimed under title 35, United States Code, to file an amended version 
of an application through EFS, for publication purposes. This new time 
frame is also being applied to submission of replacement paper drawings 
pursuant to Sec.  1.215(a). This change has already been implemented. 
See Assignment of Confirmation Number and Time Period for Filing a Copy 
of an Application by EFS for Eighteen-Month Publication Purposes, 1241 
Off. Gaz. Pat. Office 97 (Dec. 26, 2000).
    Section 1.291: Section 1.291 is proposed to be amended to require 
that when a protest under Sec.  1.291 is filed in an application, the 
real party in interest that files the protest must be named; i.e., the 
naming of the real party in interest would be a requirement of the 
filing of a proper protest. An exception to this requirement would be 
provided in that a protester desiring anonymity could submit a 
statement (together with a processing fee under Sec.  1.17(i)) that the 
protest being submitted is the first protest submitted in the 
application by the real party in interest on behalf of whom the protest 
is being submitted. Additionally, Sec.  1.291, as it is proposed to be 
amended, is reformatted for clarity.
    Currently, a protest may be submitted without identification of the 
real party in interest on behalf of whom the protest is being 
submitted. Further, there is no explicit bar in the rule against 
multiple piecemeal protest submissions (raising a slightly different 
issue in each of multiple protest submissions) other than that they 
should be submitted before prosecution closes in an application. Thus, 
Sec.  1.291, as it currently exists, is subject to abuse by, for 
example, the filing of multiple protests in a single application by 
practitioners of the same firm, with a different practitioner signing 
each protest, and additionally, by any of the inventors and/or 
assignees, where essentially the same grounds of protest are presented 
in each of the protests. In order to eliminate such potential for 
harassment of the prosecution process via multiple filings of protests 
in an application by persons serving the same interest, it is proposed 
that Sec.  1.291 be amended to require the naming of the real party in 
interest, or privy thereof, when a protest is filed.
    The party on whose behalf the protest is being filed is required to 
be identified by either: (1) The name of the business or other 
organizational entity (e.g., name of corporation) and its principal 
address, its place of formation (e.g., incorporation) and any other 
name under which the business or other organizational entity is doing 
business (d/b/a) or conducting operations; or (2) the name and 
residence of the individual who is directing the submission of the 
protest.
    The concept of identifying the ``real party in interest'' is not 
new to the Office; it is required by statute (35 U.S.C. 311) and by 
rule (Sec.  1.915) in inter partes reexamination practice with respect 
to identifying the inter partes third party reexamination requester. It 
is to be noted that the term ``privy'' is construed to include any 
party related to the real party in interest (filing the protest) as 
employer, employee, co-employee of the same employer, assignee, legal 
representative, licensee or hired contractor of the assignee or 
employer.
    Where a genuine reason for not identifying the real party in 
interest exists (such as concern by an employee as to retaliation by 
his/her employer which is the assignee of the application), Sec.  
1.291(b)(3) would permit a statement in substitution for identifying 
the real party in interest. The Sec.  1.291(b)(3) substitute statement 
must aver that the protest being submitted is, to the best of the 
knowledge of the submitting party, the first protest submitted by the 
real party in interest. A processing fee under Sec.  1.17(i) must be 
included with the Sec.  1.291(b)(3) substitute statement.
    While an examiner is always free to look at or consider any 
documents submitted in an application, under Sec.  1.291 as it is 
proposed to be amended, there would be no requirement that an examiner 
consider a second protest filed on behalf of the same real party in 
interest, unless: (1) The second protest submission (a) includes 
additional art directed to the patentability of the claims, or (b) 
otherwise raises new issues substantially different from issues earlier 
presented and affecting the patentability of the claims, which could 
not have been earlier presented; and (2) the second protest submission 
includes an explanation of what is added by the additional art or new 
issue(s) raised, and why such could not have been earlier presented.
    Finally, once a protest has been matched with an application, the 
examiner is always free to look at, or consider, any document(s) or 
other information submitted in that protest whether or not the protest 
complies with Sec.  1.291. This is true both for Sec.  1.291 as it 
presently exists, and Sec.  1.291 as it would be revised via the 
present proposal. Section 1.291 exists as a matter of administrative 
convenience for the Office, and a third party's failure to comply with 
any of the requirements of Sec.  1.291 does not vest the applicant with 
any ``right'' to preclude consideration of information in a non-
compliant protest by the examiner.
    Section 1.291(a): In order for a protest submission to be matched 
with an application, it must include sufficient information to 
adequately identify the application for which the submission is being 
made.
    Where possible, the protest should specifically identify the 
application to which the protest is directed by application number and 
filing date. If, however, the protestor is unable to specifically 
identify the application to which the protest is directed by 
application number and filing date, but, nevertheless, believes such an 
application to be pending, the protest should be directed to the 
attention of the Office of Petitions, along with as much identifying 
data for the application as is possible. If sufficient information is 
provided in the protest to match it to an application, it will be 
matched. If not, the protest submission will be returned to the party 
that submitted it.
    Section 1.291(b): Section 1.291(b) is proposed to be amended to 
provide that a protest may be filed ``[a]t any time if it is 
accompanied by the written consent of the applicant to the filing of 
the protest being submitted.'' 35 U.S.C. 122(c) prohibits the filing of 
a protest in an application after the application has been published 
without the express written consent of the applicant. In order to 
provide for the filing of protests after publication of patent 
applications, Sec.  1.291(b)(2) requires that a filing of a protest 
after publication (of an

[[Page 53841]]

application) be accompanied by a written statement of consent of the 
applicant to the filing of the protest. The written statement must 
indicate that applicant is consenting to the specific protest being 
submitted. A blanket consent upon publication of an application would 
not be sufficient to permit admission of the subsequently filed 
individual protests; applicant's consent must be specifically directed 
to the protest being filed. It should be noted, however, that 
applicant's consent need not be directed to a document that applicant 
has already looked at or reviewed, but rather may be directed to the 
``protest that party Smith has informed me that he will be submitting 
during the week of November 26th.''
    Where the protest can be ``matched'' with an application, it will 
be ``entered'' into the file (i.e., it has an entry right), if the 
protest: (1) Is timely filed; (2) indicates that it has been served on 
the applicant, and (3) properly identifies the real party in interest, 
or contains the statement pursuant to paragraph (b)(3) of the section. 
If the protest is not entered, it will be so marked, and it may be 
returned to the protestor.
    Section 1.291(c): Where the protest is ``entered'' into the 
application, the items of information submitted with the protest, and 
the argument directed to the items of information, will be 
``considered'' by the examiner, if the protest includes: (1) A listing 
of patents, publications, or other information relied upon; (2) a 
concise explanation of the relevance of each listed patent, publication 
and other item of information; (3) a copy of each listed patent, 
publication, or other item of information in written form, or at least 
pertinent portions thereof; (4) an English language translation of all 
the necessary and pertinent parts of any non-English language patent, 
publication, or other item of information relied upon; and (5) if a 
second or subsequent protest in the case, an explanation why the 
additional art or other item(s) of information presented are 
significantly different, and why they were not earlier presented. Any 
item of information for which Sec.  1.291(c)(1) through (c)(5) is not 
complied with would not be entitled to ``consideration.''
    Section 1.291(e): This paragraph is proposed to be added to 
reiterate and confirm the Office's long-standing practice to enter 
protests raising inequitable conduct issues without comment on such 
issues. See MPEP Sec.  1901.02.
    Section 1.295: Section 1.295(a) is proposed to be amended to refer 
to the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.296: Section 1.296 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.311: Section 1.311(b) is proposed to be amended to 
provide that the submission after the mailing of a notice of allowance 
of either: (1) An incorrect issue fee or publication fee; or (2) a fee 
transmittal form (or letter) for payment of issue fee or publication 
fee, will operate as a valid request to charge the correct issue fee, 
or any publication fee due, to any deposit account identified in a 
previously filed authorization to charge such fees. Additionally, non-
Office provided issue and publication fee forms would now be permitted. 
It is proposed to be clarified that for previous authorizations to be 
effective under the exceptions provided for, the previous 
authorizations must cover the issue and publication fees to be charged.
    Current Sec.  1.311(b) sets forth that an authorization to charge 
the issue fee or other post-allowance fees (such as any publication fee 
due) to a deposit account may be filed only after the mailing of a 
notice of allowance in part to encourage the use (return) of the PTOL-
85B form as that form contains important information, such as the name 
of the assignee. The last sentence of Sec.  1.311(b), however, provides 
an exception for charging the issue fee to a deposit account identified 
in a previously filed authorization if the applicant submits either an 
incorrect issue fee or an Office-provided fee transmittal form (i.e., 
Part B--Fee(s) Transmittal of a Notice of Allowance and Fee(s) Due, 
form PTOL-85). The proposed amendment to Sec.  1.311(b) would extend 
the exception to any publication fee due and expand the exception to 
apply where an applicant's own fee transmittal form or letter for 
submitting issue fee or publication fee is submitted. Further, the term 
``such'' is proposed to be added before ``fees'' in the last line of 
section 1.311(b) to clarify that the previously filed authorization 
must be an authorization to charge the appropriate fee due to an 
identified deposit account. For example, if the previously filed fee 
authorization only authorizes the Office to charge the issue fee, the 
Office would not be able to charge any publication fee due to the 
identified deposit account in the previously filed authorization even 
when the applicant submitted an issue fee transmittal form. For such 
authorization, the Office could only charge the correct issue fee to 
the identified deposit account.
    The phrase ``A completed Office-provided issue fee transmittal form 
(where no issue fee has been submitted)'' in the last sentence of Sec.  
1.311(b) is proposed to be changed to ``A fee transmittal form (or 
letter) for payment of issue fee or publication fee'' to provide that a 
submission of an Office-provided fee transmittal form (i.e., Part B of 
the form PTOL-85), or applicant's own fee transmittal form or letter 
for submitting issue fee or publication fee, (incomplete as well as a 
complete, but for a fee authorization) would operate as a request to 
charge the correct issue fee due, or any publication fee due, to any 
deposit account identified in a previously filed authorization to 
charge such fees, even if the issue fee has been previously submitted.
    Where an issue fee has been previously submitted, and the 
application is withdrawn from issue and is allowed again, since 
November 13, 2001, the Notice of Allowance has indicated the current 
amount due as the difference between the previously paid issue fee and 
the current amount for an issue fee. In such situation, a payment of 
only the difference, or a response to the notice where there is no 
issue fee due (or only the return of the Part B--Fee(s) Transmittal of 
form PTOL-85 as the current issue fee is the same amount as previously 
paid), will be treated as a ratification of the Office's decision to 
apply the previously paid issue fee. If the fee was paid in a different 
application (e.g., the parent application of a continued prosecution 
application under Sec.  1.53(d) (CPA)), the fee indicated in the notice 
as due is the current issue fee. The issue fee paid in the parent 
application cannot be refunded, or applied, to the notice of allowance 
mailed in the CPA.
    Section 1.324: Section 1.324(a) and (b) would be amended to provide 
an informational reference to 35 U.S.C. 256 and to replace ``petition'' 
with ``request.'' Section 1.324(b) would be amended to alert patentees 
to the availability of reissue to correct inventorship in a patent 
where Sec.  1.324 is not available.
    Section 1.324(a) is proposed to be amended by adding an explicit 
reference to 35 U.S.C. 256 and its requirement in order to clarify that 
the inventorship of a patent may be changed only by way of request from 
all of the inventors together with assignees of the entire interest, or 
on order of a court, and the Office will then issue a certificate 
naming the correct inventors. 35 U.S.C. 256 requires that there be

[[Page 53842]]

agreement among all parties (inventors and existing assignees), or that 
a court has issued an order so directing the inventorship change. The 
current reference in Sec.  1.324 to a petition is being eliminated in 
order to conform the rule language to earlier changes made to Sec.  
1.20(a).
    Section 1.377: Section 1.377 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17. Section 1.377 will 
retain the provision that the petition fee may be refunded if an Office 
error created the need for the petition.
    Section 1.378: Section 1.378(e) is proposed to be amended to refer 
to the petition fee set forth in Sec.  1.17(f) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.502: Section 1.502 is proposed to be amended to make it 
clear that it is the issuance and publication of the ex parte 
reexamination certificate that terminates the reexamination proceeding. 
The failure to timely respond, or the issuance of a Notice of Intent to 
Issue Reexamination Certificate (NIRC), does not terminate the 
reexamination proceeding. See the discussion below as to the amendment 
of Sec.  1.550. See also Sec. Sec.  1.116, 1.570, 1.902, 1.953, 1.957, 
1.958, 1.979, and 1.997.
    Section 1.530: Section 1.530 is proposed to be amended to state 
that proposed amendments in ex parte or inter partes reexamination are 
not effective until the reexamination certificate is both ``issued and 
published'' (emphasis added) to conform Sec.  1.530 for consistency 
with the language of 35 U.S.C. 307 and 316.
    Section 1.550: Section 1.550(c) is proposed to be amended to add a 
$200 fee requirement pursuant to Sec.  1.17(g) in ex parte 
reexamination proceedings for requests for extensions of time, which 
requests are based upon sufficient cause. Extensions of time under 
Sec.  1.136(a) are not permitted in ex parte reexamination proceedings 
because the provisions of 35 U.S.C. 41(a)(8) and Sec.  1.136(a) apply 
only to an ``application'' and not to a reexamination proceeding (ex 
parte or inter partes). Additionally, 35 U.S.C. 305 requires that ex 
parte reexamination proceedings ``will be conducted with special 
dispatch.'' Accordingly, extensions of time in inter partes 
reexamination proceedings are provided for in Sec.  1.550(c) only ``for 
sufficient cause and for a reasonable time specified.'' To evaluate 
whether a showing of ``sufficient cause'' exists and whether a 
``reasonable time'' is specified, decisions on Sec.  1.550(c) requests 
require a thorough evaluation of facts and circumstances on a case-by-
case basis. Furthermore, requests under Sec.  1.550(c) are generally 
treated expeditiously by the deciding official, especially so in 
reexamination since the statute requires ``special dispatch.'' To 
reflect the Office's cost of deciding requests under Sec.  1.550(c), 
i.e., the cost of evaluating whether a showing of ``sufficient cause'' 
exists and whether a ``reasonable time'' is specified, it is proposed 
that a requirement for a fee be added to Sec.  1.550(c).
    The present proposal tracks the above discussed proposals to 
require a fee for the decision on Sec.  1.136(b) and Sec.  1.956 
extension of time requests, and the criteria for granting of an 
extension of time under Sec.  1.550(c) is analogous to that for Sec.  
1.136(b) and Sec.  1.956.
    Section 1.550(d) is proposed to be amended to state that patent 
owner's failure to file a timely response will result in the concluding 
of prosecution of the reexamination proceeding, but will not conclude 
or terminate the reexamination proceeding.
    The patent owner's failure to file a timely response, and the 
issuance of the Notice of intent to Issue Reexamination Certificate 
(NIRC) concludes the prosecution in the reexamination proceeding. On 
the other hand, the issuance and publication of a certificate 
terminates the reexamination proceeding itself. This distinction is 
important because prosecution which is concluded may be reopened at the 
option of the Office where appropriate, and a rejection that was 
withdrawn during the proceeding may be reinstated where the propriety 
of that rejection has been reconsidered. In contrast, a reexamination 
proceeding which has been terminated is not subject to being reopened. 
After the reexamination proceeding has been terminated, it is not 
permitted to reinstate the same ground of rejection in a reexamination 
proceeding in accordance with In re Recreative Technologies, 83 F.3d 
1394, 38 USPQ2d 1776 (Fed. Cir. 1996) (holding that a ``substantial new 
question of patentability'' is not raised by prior art presented in a 
reexamination request, if the Office has previously considered (in an 
earlier examination of the patent) the same question of patentability 
as to a patent claim favorable to the patent owner based on the same 
prior art patents or printed publications.). But see Pub. L. 107-273, 
Sec.  13105, 116 Stat. 1758, 1900 (2002) (overruling In re Portola 
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), by 
amending 35 U.S.C. 303(a) and 312(a) to provide that ``[t]he existence 
of a substantial new question of patentability is not precluded by the 
fact that a patent or printed publication was previously cited by or to 
the Office, or considered by the Office'').
    This distinction between concluding the prosecution of the 
reexamination proceeding, and termination of the reexamination 
proceeding was highlighted by the Federal Circuit decision of In re 
Bass, 314 F.3d 575, 65 USPQ2d 1156 (Fed. Cir. 2003), wherein the Court 
opined that:

    Until a matter has been completed, however, the PTO may 
reconsider an earlier action. See In re Borkowski, 505 F.2d 713, 
718, 184 USPQ 29, 32-33 (CCPA 1974). A reexamination is complete 
upon the statutorily mandated issuance of a reexamination 
certificate, 35 U.S.C. 307(a); the NIRC merely notifies the 
applicant of the PTO's intent to issue a certificate. A NIRC does 
not wrest jurisdiction from the PTO precluding further review of the 
matter.

    It is to be noted that both NIRC cover sheet forms, ex parte Form 
PTOL 469 and inter partes Form PTOL 2068, specifically state (in their 
opening sentences) that ``[p]rosecution on the merits is (or remains) 
closed in this * * * reexamination proceeding. This proceeding is 
subject to reopening at the initiative of the Office, or upon 
petition.'' This statement addresses the point that the NIRC concludes 
the prosecution in the reexamination proceeding, but does not conclude 
or terminate the reexamination proceeding itself. In this notice of 
proposed rule making, it is proposed to amend the rules of practice to 
also address the point. See also Sec. Sec.  1.116, 1.502, 1.570, 1.902, 
1.953, 1.957, 1.958, 1.979, and 1.997.
    Section 1.570: The heading of Sec.  1.570, and Sec.  1.570(a), are 
proposed to be amended to make it clear that the grant of the ex parte 
reexamination certificate terminates the reexamination proceeding. The 
failure to timely respond, or the issuance of the NIRC does not 
terminate the reexamination proceeding. See the discussion as to the 
amendment of Sec.  1.550. See also Sec. Sec.  1.116, 1.502, 1.902, 
1.953, 1.957, 1.958, 1.979, and 1.997.
    Section 1.570 is also proposed to be amended in its heading and 
paragraphs (b) and (d) to recite that the reexamination certificate is 
both issued and published for consistency with the language of 35 
U.S.C. 307.
    Section 1.644: Section 1.644, paragraphs (e) and (f), are proposed 
to be amended to refer to the petition fee set forth in Sec.  1.17(f) 
for consistency with the change to Sec.  1.17. See discussion of Sec.  
1.17.

[[Page 53843]]

    Section 1.666: Section 1.666(b) and (c) are proposed to be amended 
to refer to the petition fee set forth in Sec.  1.17(f) for consistency 
with the change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.704(d): Section 1.704(d) is proposed to be amended to 
change ``cited in a communication'' to ``first cited in any 
communication'' in order to clarify that the item must have been first 
cited in any communication from a foreign patent office in a 
counterpart application instead of merely being cited in such a 
communication.
    An applicant who fails to cite an item, within thirty days of 
receipt by an individual designated in Sec.  1.56(c) of a first 
communication from a foreign patent office in a counterpart application 
citing the item, and instead files an information disclosure statement, 
within thirty days of a subsequent communication citing the item, 
cannot be considered to have acted with reasonable efforts to conclude 
prosecution of the application. The provisions of Sec.  1.704(d) do not 
apply if the applicant does not submit the IDS within the thirty-day 
window of a first communication including a citation of an item to a 
party designated in Sec.  1.56(c). The proposed change to require the 
thirty-day time frame to run from a first communication parallels the 
requirement in Sec.  1.97(e)(1).
    Section 1.705: Section 1.705(d) is proposed to be amended to 
provide that a patentee may request reconsideration of the patent term 
adjustment within thirty days of the date the patent issued if the 
patent indicates a revised patent term adjustment. Currently, any 
request for reconsideration of the patent term adjustment indicated in 
the patent is limited to the situation where the patent issues on a 
date other than the projected date of issue. If the patent indicates a 
revised patent term adjustment due to the patent being issued on a date 
other than the projected date of issue, applicant must file a request 
for reconsideration within thirty days of the date the patent issued. 
Section 1.705(d) as proposed would allow a patentee to file the request 
for reconsideration for an event which occurs after the mailing of the 
notice of allowance so long as the patentee files the request for 
reconsideration within thirty days of the date the patent issues.
    Events occurring after the mailing of the notice of allowance which 
may result in a reduction of any patent term adjustment include 
submissions of additional papers such as: (1) Request for refunds; (2) 
status letter, (3) amendments under Sec.  1.312; (4) late priority 
claims; (5) a certified copy of a priority document; (6) drawings; (7) 
letters related to biological deposits; and (8) oaths or declarations. 
See Sec.  1.704(c)(10). An additional event which may trigger the 
revision of the patent term adjustment is receipt of the payment of the 
issue fee more than 3 months after mailing of the notice of allowance. 
See Sec.  1.704(b). Events occurring after the mailing of the notice of 
allowance which may trigger an increase in the amount of patent term 
adjustment include administrative delays caused by the Office's failure 
to issue the application within four months after the date the issue 
fee was paid under 35 U.S.C. 151 and all outstanding requirements were 
satisfied. See Sec.  1.702(a)(4).
    Section 1.705(d) is also proposed to be amended to provide that any 
request for reconsideration under Sec.  1.705(d) that raises issues 
that were raised, or could have been raised, in an application for 
patent term adjustment under Sec.  1.704(b) may be dismissed as 
untimely. The purpose of Sec.  1.705(d) is to provide patentees with an 
avenue to obtain reconsideration of the patent term adjustment 
indicated in the patent when the patent term adjustment indicated in 
the patent differs from the patent term adjustment indicated in the 
notice of allowance due to events occurring after the mailing of the 
notice of allowance. Section 1.705(d) is not intended as an avenue for 
patentees to seek review of issues that were raised, or could have been 
raised, in an application for patent term adjustment under Sec.  
1.704(b). Any request for reconsideration of the patent term adjustment 
indicated in the patent on the basis of issues that were raised, or 
could have been raised, in an application for patent term adjustment 
under Sec.  1.704(b) is considered untimely if not filed within the 
period specified in Sec.  1.705(b).
    Section 1.741: Section 1.741(b) is proposed to be amended to refer 
to the petition fee set forth in section 1.17(f) for consistency with 
the change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.902: Section 1.902 is proposed to be amended to make it 
clear that it is the issuance and publication of the inter partes 
reexamination certificate that terminates the reexamination proceeding. 
The failure to timely respond, or the issuance of the NIRC does not 
terminate the reexamination proceeding. See the discussion as to the 
amendment of Sec.  1.550. See also Sec. Sec.  1.116, 1.502, 1.570, 
1.953, 1.957, 1.958, 1.979, and 1.997.
    Section 1.953: Section 1.953(c) is proposed to be amended to state 
that patent owner's failure to file a timely response will result in 
the concluding of the prosecution of the reexamination proceeding, but 
will not terminate the reexamination proceeding. See the discussion as 
to the amendment of Sec.  1.550 for the rationale for this change. See 
also Sec. Sec.  1.116, 1.502, 1.570, 1.902, 1.957, 1.958, 1.979, and 
1.997.
    The subheading preceding Sec.  1.956 is proposed to be amended to 
refer to concluding of prosecution of the reexamination proceeding, 
rather than conclusion or termination of the reexamination proceeding, 
since that is what the sections which follow deal with. It is Sec.  
1.997, Issuance of Inter Partes Reexamination Certificate, that deals 
with termination of the reexamination proceeding. See the discussion 
above as to the amendment of Sec.  1.550 for the rationale for this 
change.
    Section 1.956: Section 1.956 is proposed to be amended to add a 
$200 fee requirement pursuant to Sec.  1.17(g) in inter partes 
reexamination proceedings for requests for extensions of time, which 
requests are based upon sufficient cause. Extensions of time under 
Sec.  1.136(a) are not permitted in inter partes reexamination 
proceedings because the provisions of 35 U.S.C. 41(a)(8) and Sec.  
1.136(a) apply only to an ``application'' and not to a reexamination 
proceeding (ex parte or inter partes). Additionally, 35 U.S.C. 314 
requires that inter partes reexamination proceedings ``will be 
conducted with special dispatch.'' Accordingly, extensions of time in 
inter partes reexamination proceedings are provided for in Sec.  1.956 
only ``for sufficient cause and for a reasonable time specified.'' To 
evaluate whether a showing of ``sufficient cause'' exists and whether a 
``reasonable time'' is specified, decisions on Sec.  1.956 requests 
require a thorough evaluation of facts and circumstances on a case-by-
case basis. Furthermore, requests under Sec.  1.956 are generally 
treated expeditiously by the deciding official, especially so in 
reexamination since the statute requires ``special dispatch.'' To 
reflect the Office's cost of deciding requests under Sec.  1.956, i.e., 
the cost of evaluating whether a showing of ``sufficient cause'' exists 
and whether a ``reasonable time'' is specified, it is proposed that a 
requirement for a fee be added to Sec.  1.956.
    The present proposal tracks the above-discussed proposals to 
require a fee for the decision on Sec.  1.136(b) and Sec.  1.550(c) 
extension of time requests, and the criteria for granting of an 
extension of time under Sec.  1.956 is analogous to that for Sec.  
1.136(b) and Sec.  1.550(c).
    Section 1.957: Section 1.957(b) is proposed to be amended to state 
that

[[Page 53844]]

patent owner's failure to file a timely response will result in the 
concluding of prosecution of the inter partes reexamination proceeding, 
but will not conclude or terminate the reexamination proceeding. See 
the discussion as to the amendment of Sec.  1.550 for the rationale for 
this change. See also Sec. Sec.  1.116, 1.502, 1.570, 1.902, 1.953, 
1.958, 1.979, and 1.997.
    Section 1.958: The heading of Sec.  1.958 is proposed to be amended 
to state the concluding of prosecution of the reexamination proceeding, 
rather than conclusion or termination of the reexamination proceeding, 
since that is what the materials which follow deal with. See the 
discussion above as to the amendment of Sec.  1.550 for the rationale 
for this change. Note that both Sec.  1.957(b) and (c) result in the 
concluding of reexamination prosecution. Under Sec.  1.957(b), 
prosecution is concluded in toto; under Sec.  1.957(c), prosecution is 
concluded as to the non-patentable claims. See also Sec. Sec.  1.116, 
1.502, 1.570, 1.902, 1.953, 1.957, 1.979, and 1.997.
    Section 1.979: Section 1.979(f) is proposed to be amended to state 
that patent owner's failure to file a timely response will result in a 
concluding of prosecution of the reexamination proceeding, but will not 
conclude or terminate the reexamination proceeding, and that it is the 
reexamination certificate under Sec.  1.997 that terminates the 
reexamination proceeding. See the discussion as to the amendment of 
Sec.  1.550 for the rationale for this change. See also Sec. Sec.  
1.116, 1.502, 1.570, 1.902, 1.953, 1.957, 1.958, and 1.997.
    Section 1.997: The heading of Sec.  1.997 is proposed to be amended 
to refer to the issuance and publication of inter partes reexamination 
certificates. The heading of Sec.  1.997 and Sec.  1.997(a) are 
proposed to be amended to make it clear that the issuance and 
publication of the inter partes reexamination certificate terminates 
the reexamination proceeding. The failure to timely respond, or the 
issuance of the NIRC does not terminate the reexamination proceeding. 
See the discussion as to the amendment of Sec.  1.550. See also 
Sec. Sec.  1.116, 1.502, 1.570, 1.902, 1.953, 1.957, 1.958, and 1.979. 
Section 1.997(a) is also proposed to be revised to make its language 
consistent with that of Sec.  1.570(a).
    Section 1.997, paragraphs (b) and (d), are proposed to be amended 
to recite that the reexamination certificate is both issued and 
published for consistency with the language of 35 U.S.C. 316.
    Section 5.12: Section 5.12(b) is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 5.15: Section 5.15(c) is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.
    Section 5.25: Section 5.25 is proposed to be amended to refer to 
the petition fee set forth in Sec.  1.17(g) for consistency with the 
change to Sec.  1.17. See discussion of Sec.  1.17.

Rule Making Considerations

Regulatory Flexibility Act

    The Deputy General Counsel for General Law, United States Patent 
and Trademark Office certified to the Chief Counsel for Advocacy, Small 
Business Administration, that the changes proposed in this notice (if 
adopted) would not have a significant impact on a substantial number of 
small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The 
primary impact of the changes proposed in this notice are to: (1) 
Permit electronic signatures on a number of patent-related submissions; 
(2) streamline the requirements for incorporation by reference of 
prior-filed applications; and (3) clarify the qualifications for 
claiming small entity status for purposes of paying reduced patent 
fees. These changes to the rules of practice (if adopted) will simplify 
the patent application, and as such, will benefit all patent applicants 
(including small entities).
    The Office is also proposing to adjust certain petition fees that 
are set under the Office's authority under 35 U.S.C. 41(d) to adjust 
these petition fees to be in alignment with the actual average costs of 
deciding such petitions. There are approximately 7,500 petitions filed 
each year of the type that would be affected by the proposed patent fee 
changes. Since the Office received over 400,000 applications 
(provisional and nonprovisional) in fiscal year 2002, this proposed 
change would impact relatively few (less than 2% of) patent applicants. 
In addition, the petition fee amounts proposed by the Office for 
petitions whose fees are set under the authority in 35 U.S.C. 41(d) are 
comparable or lower than the petition fee amounts for petitions whose 
fees are set by statute in 35 U.S.C. 41(a) ($110.00 to $1,970.00 for 
extension of time petitions (35 U.S.C. 41(a)(8)), or $1,300.00 to 
revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)).

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 rule making involves information collection requirements which 
are subject to review by the Office of Management and Budget (OMB) 
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
collections of information involved in this final rule have been 
reviewed and previously approved by OMB under the following control 
numbers: 0651-0016, 0651-0020, 0651-0031, 0651-0032, 0651-0033, 0651-
0034 and 0651-0036.
    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: 0651-0016.
    Title: Rules for Patent Maintenance Fees.
    Form Numbers: PTO/SB/45/47/65/66.
    Type of Review: Approved through May of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 348,110.
    Estimated Time Per Response: Between 20 seconds and 8 hours.
    Estimated Total Annual Burden Hours: 30,495 hours.
    Needs and Uses: Maintenance fees are required to maintain a patent, 
except for design or plant patents, in force under 35 U.S.C. 41(b). 
Payment of maintenance fees are required at 3\1/2\, 7\1/2\ and 11\1/2\ 
years after the grant of the patent. A patent number and application 
number of the patent on

[[Page 53845]]

which maintenance fees are paid are required in order to ensure proper 
crediting of such payments.

    OMB Number: 0651-0020.
    Title: Patent Term Extension.
    Form Numbers: None.
    Type of Review: Approved through October of 2004.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 26,858.
    Estimated Time Per Response: Between 1 and 25 hours.
    Estimated Total Annual Burden Hours: 30,903 hours.
    Needs and Uses: The information supplied to the United States 
Patent and Trademark Office by an applicant requesting reconsideration 
of a patent term adjustment determination under 35 U.S.C. 154(b) (Sec.  
1.702 et seq.) is used by the United States Patent and Trademark Office 
to determine whether its determination of patent term adjustment under 
35 U.S.C. 154(b) is correct, and whether the applicant is entitled to 
reinstatement of reduced patent term adjustment. The information 
supplied to the United States Patent and Trademark Office by an 
applicant seeking a patent term extension under 35 U.S.C. 156 (Sec.  
1.710 et seq.) is used by the United States Patent and Trademark 
Office, the Department of Health and Human Services, and the Department 
of Agriculture to determine the eligibility of a patent for extension 
and to determine the period of any such extension. The applicant can 
apply for patent term and interim extensions, petition the Office to 
review final eligibility decisions, withdraw patent term applications, 
and declare his or her eligibility to apply for a patent term 
extension.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/21-27, PTO/SB/30-32, 
PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/SB/91-92, 
PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055--A/B, PTOL-413A.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,208,339.
    Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
    Estimated Total Annual Burden Hours: 830,629 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, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29 
and 29A, PTO/SB/101-110.
    Type of Review: Approved through July of 2006.
    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: 454,287.
    Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
    Estimated Total Annual Burden Hours: 4,171,568 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 
Cover Sheet, 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, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53, 
PTO/SB/55-58, 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: 1.8 minutes to 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.

    OMB Number: 0651-0034.
    Title: Secrecy and License to Export.
    Form Numbers: None.
    Type of Review: Approved through March 2004.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal 
Government, and State, Local, or Tribal Governments.
    Number of Respondents: 2,194.
    Estimated Time Per Response: Between 30 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 1,523 hours.
    Needs and Uses: When disclosure of an invention may be detrimental 
to national security, the Director of the USPTO must issue a secrecy 
order and withhold the publication of the application or grant of a 
patent for such period as the national interest requires. The USPTO is 
also required to grant foreign filing licenses in certain circumstances 
to applicants filing patent applications in foreign countries. This 
collection is used by the public to petition the USPTO to allow 
disclosure, modification, or rescission of a secrecy order, or to 
obtain a general or group permit. Applicants may also petition the 
USPTO for a foreign filing license or a retroactive license.

    OMB Number: 0651-0036.
    Title: Statutory Invention Registration.
    Form Numbers: PTO/SB/94.
    Type of Review: Approved through April of 2006.
    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: 73.
    Estimated Time Per Response: 24 minutes.

[[Page 53846]]

    Estimated Total Annual Burden Hours: 29 hours.
    Needs and Uses: This collection of information is necessary to 
ensure that the requirements of 35 U.S.C. 157 and 37 CFR 1.293 through 
1.297 are met. The public uses form PTO/SB/94, Request for Statutory 
Invention Registration, to request and authorize publication of a 
regularly filed patent application as a statutory invention 
registration, to waive the right to receive a United States patent on 
the same invention claimed in the identified patent application, and to 
agree that the waiver will be effective upon publication of the 
statutory invention registration. The Office uses form PTO/SB/94, 
Request for a Statutory Invention Registration, to review, grant, or 
deny a request for a statutory invention registration. No forms are 
associated with the petition to review final refusal to publish a 
statutory invention registration or the petition to withdraw a 
publication request. The petition to review final refusal to publish a 
statutory invention registration is used by the public to petition the 
Office's rejection of a request for a statutory invention registration. 
The Office uses the petition to withdraw a publication request to 
review requests to stop publication of a statutory invention 
registration.
    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, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 
22313-1450, 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

37 CFR Part 1

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

37 CFR Part 5

    Classified information, foreign relations, inventions and patents.

    For the reasons set forth in the preamble, 37 CFR parts 1 and 5 are 
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 1.4 is amended by adding paragraphs (d)(1)(iv) and (h) 
to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d)(1) * * *
    (iv)(A) Where correspondence for a patent application, patent file, 
or a reexamination proceeding is printed on paper for hand or mail 
delivery, or is submitted via the Office's Electronic Filing System, or 
facsimile transmission (pursuant to Sec.  1.6(d) of this part), it may 
be electronically signed. The electronic signature must consist only of 
numbers and/or letters, with punctuation and spaces (e.g., Jane DOE-
JONES, James JONES, Jr., and Dr. James JONES). The person signing the 
correspondence must personally insert the electronic signature between 
two forward slash marks. The signature must be the signer's actual 
name, except as provided by paragraph (d)(1)(iv)(B) of this section, 
including the given name, middle name or initial, and family name and, 
optionally, a title. The actual name must be presented with only the 
family name being entirely in capital letters. A practitioner, signing 
pursuant to Sec. Sec.  1.33(b)(1) or 1.33(b)(2) of this part, must use 
his/her complete name as registered as his or her electronic signature, 
and the signer's registration number must be supplied, either as part 
of the electronic signature, or adjacent the electronic signature. If 
part of the electronic signature, the number () character may 
be used when appearing before a practitioner's registration number; 
otherwise the number character may not be used in an electronic 
signature.
    (B) Where a person's electronic signature as set forth in paragraph 
(d)(1)(iv)(A) of this section is not the person's actual name, the 
correspondence must include the person's actual name in printed or 
typed form immediately below the electronic signature, and clearly 
indicate that it is the signer's actual name, with only the family name 
being presented entirely in capital letters.
* * * * *
    (h) The Office may require ratification or confirmation of a 
signature, or a resubmission of a document, such as when the Office has 
reasonable doubt as to the authenticity (veracity) of the signature, 
e.g., where there are variations of a signature, or where the signature 
and the complete typed or printed name, if any, does not clearly 
identify the person signing, or where more than one person has used the 
same signature (with a different typed or printed name below the 
signature).
    3. Section 1.6 is amended by removing and reserving paragraph (e) 
and revising paragraph (d)(4) to read as follows:


Sec.  1.6  Receipt of correspondence.

* * * * *
    (d) * * *
    (4) Drawings submitted under Sec. Sec.  2.51, 2.52, or 2.72, and 
color drawings submitted under Sec. Sec.  1.81, 1.83 through 1.85, 
1.152, 1.165, 1.173, or 1.437;
* * * * *
    (e) [Reserved]
* * * * *
    4. Section 1.8 is amended by revising the introductory text of 
paragraph (a) and the introductory text of paragraph (b) to read as 
follows:


Sec.  1.8  Certificate of mailing or transmission.

    (a) Except in the situations enumerated in paragraph (a)(2) of this 
section or as otherwise expressly excluded in this chapter, 
correspondence required to be filed in the Patent and Trademark Office 
within a set period of time will be considered as being timely filed if 
the procedure described in this section is followed. The actual date of 
receipt will be used for all other purposes.
* * * * *
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the Patent and Trademark Office after a 
reasonable amount of time has elapsed from the time of mailing or 
transmitting the correspondence, or after the application is held to be 
abandoned, or after the proceeding is dismissed or decided with 
prejudice, or

[[Page 53847]]

the prosecution of a reexamination proceeding is concluded (Sec. Sec.  
1.550(d), 1.957(b)) or limited (Sec. Sec.  1.957(a), 1.957(c)), the 
correspondence will be considered timely if the party who forwarded 
such correspondence:
* * * * *
    5. Section 1.10 is amended by adding new paragraphs (g), (h), and 
(i) to read as follows:


Sec.  1.10  Filing of papers and fees by ``Express Mail.''

* * * * *
    (g) Any person attempting to file correspondence under this section 
that was returned by the USPS may petition the Director to consider 
such correspondence as filed on a particular date in the Office, 
provided that:
    (1) The petition is filed promptly after the person becomes aware 
of the return of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail';
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon and a copy of the ``Express Mail'' mailing label 
showing the ``date-in'' and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the 
correspondence and that the correspondence or copy of the 
correspondence is the original correspondence or a true copy of the 
correspondence originally deposited with the USPS on the requested 
filing date.
    (h) Any person attempting to file correspondence under this section 
that was refused by the USPS may petition the Director to consider such 
correspondence as filed on a particular date in the Office, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
of the refusal of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
attempted mailing by ``Express Mail';
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon; and
    (4) The petition includes a statement by the person who originally 
attempted to deposit the correspondence with the USPS which 
establishes, to the satisfaction of the Director, the original attempt 
to deposit the correspondence and that the correspondence or copy of 
the correspondence is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited with the USPS on 
the requested filing date.
    (i) Any person attempting to file correspondence under this section 
that was unable to be deposited with the USPS due to an interruption or 
emergency in ``Express Mail'' service which has been so designated by 
the Director, may petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided that:
    (1) The petition is filed in a manner designated by the Director 
promptly after the person becomes aware of the designated interruption 
or emergency in ``Express Mail'' service;
    (2) The petition includes the original correspondence or a copy of 
the original correspondence; and
    (3) The petition includes a statement which establishes, to the 
satisfaction of the Director, that the correspondence would have been 
deposited with the USPS but for the designated interruption or 
emergency in ``Express Mail'' service, and that the correspondence or 
copy of the correspondence is the original correspondence or a true 
copy of the correspondence originally attempted to be deposited with 
the USPS on the requested filing date.
    6. Section 1.14 is amended by revising paragraph (h)(1) as follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (h) * * *
    (1) The fee set forth in Sec.  1.17(g); and
* * * * *
    7. Section 1.17 is amended by adding paragraphs (f) and (g) and 
revising (h), (i), (l), and (m) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (f) For filing a petition under one of the following sections which 
refers to this paragraph--$400.00
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.57(a)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically provided 
for.
    Sec.  1.183--to suspend the rules.
    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.
    (g) For filing a petition under one of the following sections which 
refers to this paragraph--$200.00
    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.  1.59--for expungement of information.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.136(b)--for review of a request for extension of time when 
the provisions of section 1.136(a) are not available.
    Sec.  1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec.  1.295--for review of refusal to publish a statutory invention 
registration.
    Sec.  1.296--to withdraw a request for publication of a statutory 
invention registration filed on or after the date the notice of intent 
to publish issued.
    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.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    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.
    (h) For filing a petition under one of the following sections which 
refers to this paragraph--$130.00
    Sec.  1.19(h)--to request documents in a form other than that 
provided in this part.
    Sec.  1.84--for accepting color drawings or photographs.
    Sec.  1.91--for entry of a model or exhibit.
    Sec.  1.102(d)--to make an application special.
    Sec.  1.313--to withdraw an application from issue.
    Sec.  1.314--to defer issuance of a patent.
    Sec.  104.3--for a waiver of a rule in part 104 of this title.
    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph--$130.00

[[Page 53848]]

    Sec.  1.28(c)(3)--for processing a non-itemized fee deficiency 
based on an error in small entity status.
    Sec.  1.41--for supplying the name or names of the inventor or 
inventors after the filing date without an oath or declaration as 
prescribed by Sec.  1.63, except in provisional applications.
    Sec.  1.48--for correcting inventorship, except in provisional 
applications.
    Sec.  1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec.  1.53(b)(3)--to convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application under Sec.  1.53(b).
    Sec.  1.55--for entry of late priority papers.
    Sec.  1.99(e)--for processing a belated submission under Sec.  
1.99.
    Sec.  1.103(b)--for requesting limited suspension of action, 
continued prosecution application (Sec.  1.53(d)).
    Sec.  1.103(c)--for requesting limited suspension of action, 
request for continued examination (Sec.  1.114).
    Sec.  1.103(d)--for requesting deferred examination of an 
application.
    Sec.  1.215(a)--for processing of replacement drawings to include 
the drawings in any patent application publication.
    Sec.  1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
    Sec.  1.221--for requesting voluntary publication or republication 
of an application.
    Sec.  1.291(b)(3)--for processing a substitute statement under 
Sec.  1.291(b)(3).
    Sec.  1.497(d)--for filing an oath or declaration pursuant to 35 
U.S.C. 371(c)(4) naming an inventive entity different from the 
inventive entity set forth in the international stage.
    Sec.  3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371 for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151 or for 
the revival of an unavoidably concluded or limited reexamination 
prosecution under 35 U.S.C. 133 (Sec.  1.137(a)):
    By a small entity (Sec.  1.27(a))--$55.00
    By other than a small entity--$110.00
    (m) For filing a petition for the revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
concluded or limited reexamination prosecution under 35 U.S.C. 41(a)(7) 
(Sec.  1.137(b)):
    By a small entity (Sec.  1.27(a))--$665.00
    By other than a small entity--$1,330.00
* * * * *
    8. Section 1.19 is amended by revising paragraphs (b), (g), and (h) 
to read as follows:


Sec.  1.19  Document supply fees.

* * * * *
    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of the paper portion or the 
electronic image equivalent to a paper portion of a patent application 
as filed--$20.00
    (2) Certified or uncertified copy on paper of the paper portion or 
the electronic image equivalent of a patent-related file wrapper and 
contents:
    (i) Paper file wrapper with paper file wrapper contents of 400 or 
fewer pages, or the entire electronic image contents portion, of a 
patent application--$200.00
    (ii) Additional fee for each additional 100 pages or portion 
thereof of the paper contents of a paper file wrapper--$40.00
    (iii) Additional fee for certification--$25.00
    (3) Certified or uncertified copy on compact disc of patent-related 
file wrapper contents:
    (i) First compact disc in a single order--$55.00
    (ii) Each additional compact disc in the single order of paragraph 
(b)(3)(i) of this section--$15.00
    (4) Certified or uncertified copy of Office records, per document 
except as otherwise provided in this section--$25.00
    (5) For assignment records, abstract of title and certification, 
per patent --$25.00
* * * * *
    (g) Copies of unscanned documents and documents on media not 
permitted by Sec.  1.52(a) or (e) will be provided at cost.
    (h) Requests for documents in a form other than that provided by 
this part must be in writing in the form of a petition with the fee set 
forth in Sec.  1.17(h) and will be provided at cost.
    9. Section 1.27 is amended by revising paragraph (a) to read as 
follows:


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

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention), who has not 
assigned, granted, conveyed, or licensed, and is under no currently 
enforceable obligation under contract or law to assign, grant, convey, 
or license, any rights in the invention. An inventor or other 
individual who has transferred some rights, or is under a currently 
enforceable obligation to transfer some rights in the invention to one 
or more parties, can also qualify for small entity status if all the 
parties who have had rights in the invention transferred to them also 
qualify for small entity status either as a person, small business 
concern, or nonprofit organization under this section.
    (2) Small business concern. A small business concern, as used in 
paragraph

(c) of this section, means any business concern that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no currently enforceable obligation under contract or law to assign, 
grant, convey, or license, any rights in the invention to any person, 
concern, or organization which would not qualify for small entity 
status as a person, small business concern, or nonprofit organization; 
and
    (ii) Meets the size standards set forth in 13 CFR 121.801 through 
121.805 to be eligible for reduced patent fees. Questions related to 
standards for a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 Third Street, SW., 
Washington, DC 20416.
    (3) Nonprofit Organization. A nonprofit organization, as used in 
paragraph (c) of this section, means any nonprofit organization that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no currently enforceable obligation under contract or law to assign, 
grant, convey, or license, any rights in the invention to any person, 
concern, or organization which would not qualify as a person, small 
business concern, or a nonprofit organization; and

[[Page 53849]]

    (ii) Is either:
    (A) A university or other institution of higher education located 
in any country;
    (B) An organization of the type described in section 501(c)(3) of 
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 
501(a));
    (C) Any nonprofit scientific or educational organization qualified 
under a nonprofit organization statute of a state of this country (35 
U.S.C. 201(i)); or
    (D) Any nonprofit organization located in a foreign country which 
would qualify as a nonprofit organization under paragraphs 
(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it 
were located in this country.
* * * * *
    10. Section 1.47 is amended by revising paragraphs (a) and (b) to 
read as follows:


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

    (a) If a joint inventor refuses to join in an application for 
patent or cannot be found or reached after diligent effort, the 
application may be made by the other inventor on behalf of himself or 
herself and the nonsigning inventor. The oath or declaration in such an 
application must be accompanied by a petition including proof of the 
pertinent facts, the fee set forth in Sec.  1.17(g), and the last known 
address of the nonsigning inventor. The nonsigning inventor may 
subsequently join in the application by filing an oath or declaration 
complying with Sec.  1.63.
    (b) Whenever all of the inventors refuse to execute an application 
for patent, or cannot be found or reached after diligent effort, a 
person to whom an inventor has assigned or agreed in writing to assign 
the invention, or who otherwise shows sufficient proprietary interest 
in the matter justifying such action, may make application for patent 
on behalf of and as agent for all the inventors. The oath or 
declaration in such an application must be accompanied by a petition 
including proof of the pertinent facts, a showing that such action is 
necessary to preserve the rights of the parties or to prevent 
irreparable damage, the fee set forth in Sec.  1.17(g), and the last 
known address of all of the inventors. An inventor may subsequently 
join in the application by filing an oath or declaration complying with 
Sec.  1.63.
* * * * *
    11. Section 1.52 is amended by revising the heading and paragraphs 
(b)(1), (b)(2)(ii), (d)(1), (e)(1) and (e)(3)(i) to read as follows:


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

* * * * *
    (b) * * *
    (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 that is signed by the individual who made the 
translation.
    (2) * * *
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier, preferably a font size of 12) lettering style having 
capital letters which should be at least 0.422 cm. (0.166 inch) high, 
but may be no smaller than 0.21 cm. (0.08 inch) high; and
* * * * *
    (d) * * *
    (1) Nonprovisional application. If a nonprovisional application is 
filed in a language other than English, an English language translation 
of the non-English language application, a statement that the 
translation is accurate that is signed by the individual who made the 
translation, and the processing fee set forth in Sec.  1.17(i) are 
required. If these items are not filed with the application, applicant 
will be notified and given a period of time within which they must be 
filed in order to avoid abandonment.
* * * * *
    (e) * * *
    (1) The following documents may be submitted to the Office on a 
compact disc in compliance with this paragraph:
    (i) A computer program listing (see Sec.  1.96);
    (ii) A ``Sequence Listing'' (submitted under Sec.  1.821(c)); or
    (iii) Any individual table (see Sec.  1.58) if the table is more 
than 50 pages in length, or if the total number of pages of all of the 
tables in an application exceeds 100 pages in length, where a table 
page is a page printed on paper in conformance with paragraph (b) of 
this section and Sec.  1.58(c).
    (2) * * *
    (3)(i) Each compact disc must conform to the International 
Standards Organization (ISO) 9660 standard, and the contents of each 
compact disc must be in compliance with the American Standard Code for 
Information Interchange (ASCII). CD-R discs must be finalized so that 
they are closed to further writing to the CD-R.
* * * * *
    12. Section 1.53 is amended by revising paragraph (e)(2) to read as 
follows:


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

* * * * *
    (e) * * *
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by 
way of a petition pursuant to this paragraph accompanied by the fee set 
forth in Sec.  1.17(f). In the absence of a timely (Sec.  1.181(f)) 
petition pursuant to this paragraph, the filing date of an application 
in which the applicant was notified of a filing error pursuant to 
paragraph (e)(1) of this section will be the date the filing error is 
corrected.
* * * * *
    13. Section 1.55 is amended by revising paragraphs (a)(1)(ii), 
(a)(4), and (c) and adding paragraph (a)(1)(iii) to read as follows:


Sec.  1.55  Claim for foreign priority.

    (a) * * *
    (1) * * *
    (ii) In an international application designating the United States, 
the claim for priority must be made during the pendency of the 
application and within the time limit set forth in the PCT and the 
Regulations under the PCT.
    (iii) If an application claiming the benefit of a prior foreign 
application meets the twelve-month filing period requirement in 35 
U.S.C. 119(a) only through one or more prior-filed nonprovisional 
applications or international applications designating the United 
States for which a benefit is claimed under 35 U.S.C. 120, 121, or 
365(c) and 37 CFR 1.78(a), each such prior-filed application must also 
contain a claim for priority in compliance with this section or the 
Regulations under the PCT to the prior foreign application.
* * * * *
    (4) An English language translation of a non-English language 
foreign application is not required except when the application is 
involved in an interference (Sec.  1.630), when necessary to overcome 
the date of a reference relied upon by the examiner, or when 
specifically required by the examiner. If an English language 
translation is required, it must be filed together with

[[Page 53850]]

a statement that the translation of the certified copy is accurate that 
is signed by the individual who made the translation.
* * * * *
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d), 
365(a)-(b) not presented within the time period provided by paragraph 
(a) of this section is considered to have been waived. If a claim for 
priority under 35 U.S.C. 119(a)-(d), 365(a)-(b) is presented after the 
time period provided by paragraph (a) of this section, the claim may be 
accepted if the claim identifying the prior foreign application by 
specifying its application number, country (or intellectual property 
authority), and the day, month, and year of its filing was 
unintentionally delayed. A petition to accept a delayed claim for 
priority under 35 U.S.C. 119(a)-(d), 365(a)-(b) must be accompanied by:
    (1) The claim under 35 U.S.C. 119(a)-(d), or 365(a)-(b) and this 
section to the prior foreign application, unless previously submitted;
    (2) The surcharge set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay between the date the claim 
was due under paragraph (a)(1) of this section and the date the claim 
was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    14. A new Sec.  1.57 is added to read as follows:


Sec.  1.57  Incorporation by reference.

    (a) Subject to the conditions and requirements of this paragraph, 
if all or a portion of the specification or drawings is inadvertently 
omitted from an application, but the application contains a claim under 
Sec.  1.55 for priority of a prior-filed foreign application, or a 
claim under Sec.  1.78 for the benefit of a prior-filed provisional, 
nonprovisional, or international application, that was present on the 
date of receipt of the application, and the omitted portion of the 
specification or drawings is completely contained in the prior-filed 
application, the claim under Sec. Sec.  1.55 or 1.78 shall also be 
considered an incorporation by reference of the prior-filed 
application.
    (1) The application must be amended to include the omitted portion 
of the specification or drawings within the time period set by the 
Office, but in no case later than the close of prosecution as defined 
by Sec.  1.114. The examiner may require the applicant to supply a copy 
of the prior-filed application, to supply an English language 
translation of any prior-filed application that is in a language other 
than English, and to identify where the omitted portion of the 
specification or drawings can be found in the prior-filed application.
    (2) Any amendment to an international application pursuant to this 
paragraph shall be effective only as to the United States. In addition, 
no request to add the missing part of the description or the missing 
drawing in an international application designating the United States 
will be acted upon by the Office prior to the expiration of the 
applicable time limit under PCT Article 22(1) or (2), or Article 39(a).
    (3) If an application is not otherwise entitled to a filing date 
under Sec.  1.53(b) or PCT Article 11, the amendment must be by way of 
a petition pursuant to this paragraph accompanied by the fee set forth 
in Sec.  1.17(f).
    (b) Except as provided in paragraph (a) of this section, an 
incorporation by reference must be identified by using the language 
``incorporated by reference'' and must identify the referenced patent, 
application, or publication in the manner set forth in Sec.  1.98(b)(1) 
through (b)(5).
    (c) ``Essential material'' may be incorporated by reference, but 
only by way of an incorporation by reference to a U.S. patent or U.S. 
patent application publication, which patent or patent application 
publication does not itself incorporate such essential material by 
reference. ``Essential material'' is material that is necessary to:
    (1) Provide a written description of the invention, and of the 
manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the same, and set forth the best mode contemplated by the 
inventor of carrying out the invention as required by the first 
paragraph of 35 U.S.C. 112;
    (2) Describe the claimed invention in terms that particularly point 
out and distinctly claim the invention as required by the second 
paragraph of 35 U.S.C. 112; or
    (3) Describe the structure, material, or acts that correspond to a 
means or step for performing a specified function as required by the 
sixth paragraph of 35 U.S.C. 112.
    (d) Other material (``Nonessential material'') may be incorporated 
by reference to domestic or foreign patents or published applications, 
prior-filed commonly owned U.S. applications, or non-patent 
publications. An incorporation by reference by hyperlink or other form 
of browser executable code is not permitted.
    (e) The examiner may require the applicant to supply a copy of the 
material incorporated by reference. If the Office requires the 
applicant to supply a copy of material incorporated by reference, the 
material must be accompanied by a statement that the copy consists of 
the same material incorporated by reference in the referencing 
application.
    (f) A purported incorporation of material by reference that does 
not comply with the requirements of paragraphs (b) though (e) of this 
section is not effective to incorporate such material by reference 
unless corrected by the applicant in a timely manner.
    15. Section 1.58 is revised to read as follows:


Sec.  1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulae, but shall not contain drawings or flow 
diagrams. The description portion of the specification may contain 
tables, if the tables are not also included in the drawings; claims may 
contain tables either if necessary to conform to 35 U.S.C. 112 or if 
otherwise found to be desirable.
    (b) Tables that are submitted in electronic form (Sec. Sec.  
1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g., 
alignment of columns and rows) of the table elements when displayed so 
as to visually preserve the relational information they convey. 
Chemical and mathematical formulae must be encoded to maintain the 
proper positioning of their characters when displayed in order to 
preserve their intended meaning.
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with Sec.  1.52(a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape 
orientation if they cannot be presented satisfactorily in a portrait 
orientation. Typewritten characters used in such formulae and tables 
must be chosen from a block (nonscript) type font or lettering style 
having capital letters which should be at least 0.422 cm. (0.166 inch) 
(e.g., preferably Arial, Times Roman, or Courier with a font size of 
12) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a 
font size of 6). A space at least 0.64 cm. (1/4 inch) high should be 
provided between complex formulae and tables and the text. Tables 
should have the lines and columns of data closely spaced to conserve 
space, consistent with a high degree of legibility.

[[Page 53851]]

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


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

* * * * *
    (b) An applicant may request that the Office expunge 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(g) and establish to the satisfaction of the Director that the 
expungement of the information is appropriate in which case a notice 
granting the petition for expungement will be provided.
* * * * *
    17. Section 1.69 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.69  Foreign language oaths and declarations.

* * * * *
    (b) Unless the text of any oath or declaration in a language other 
than English is a form provided by the Patent and Trademark Office, it 
must be accompanied by an English translation together with a statement 
that the translation is accurate that is signed by the individual who 
made the translation, except that in the case of an oath or declaration 
filed under Sec.  1.63, the translation may be filed in the Office no 
later than two months from the date applicant is notified to file the 
translation.
    18. Section 1.76 is amended by revising paragraphs (a) and (c)(2) 
to read as follows:


Sec.  1.76  Application data sheet.

    (a) Application data sheet. An application data sheet is a sheet or 
sheets, that may be voluntarily submitted in either provisional or 
nonprovisional applications, which contains bibliographic data, 
arranged in a format specified by the Office. An application data sheet 
must be titled ``Application Data Sheet'' and must contain all of the 
section headings listed in paragraph (b) of this section, with any 
appropriate data for each section heading. If an application data sheet 
is provided, the application data sheet is part of the provisional or 
nonprovisional application for which it has been submitted.
* * * * *
    (c) * * *
    (2) Must be titled ``Supplemental Application Data Sheet,'' include 
all of the section headings listed in paragraph (b) of this section, 
include all appropriate data for each section heading, and identify the 
information that is being changed (added, deleted, or modified).
* * * * *
    19. Section 1.78 is amended by revising paragraph (a)(1), 
(a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) to read as follows:


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

    (a)(1) A nonprovisional application or international application 
designating the United States of America may claim an invention 
disclosed in one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America. In order for an application to claim the benefit of 
a prior-filed copending nonprovisional application or international 
application designating the United States of America, each prior-filed 
application must name as an inventor at least one inventor named in the 
later-filed application and disclose the named inventor's invention 
claimed in at least one claim of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 112. In addition, 
each prior-filed application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) and include the basic filing fee set forth in Sec.  1.16; 
or
    (iii) Entitled to a filing date as set forth in Sec.  1.53(b) and 
have paid therein the processing and retention fee set forth in Sec.  
1.21(l) within the time period set forth in Sec.  1.53(f).
    (2) * * *
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76), or the specification must 
contain or be amended to contain such reference in the first 
sentence(s) following the title.
* * * * *
    (5) * * *
    (iii) If the later-filed application is a non-provisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76), or the specification must 
contain or be amended to contain such reference in the first 
sentence(s) following the title.
    (iv) If the prior-filed provisional application was filed in a 
language other than English and an English-language translation of the 
prior-filed provisional application and a statement that the 
translation is accurate that is signed by the individual who made the 
translation were not previously filed in the prior-filed provisional 
application or the later-filed nonprovisional application, applicant 
will be notified and given a period of time within which to file an 
English-language translation of the non-English-language prior-filed 
provisional application and a statement that the translation is 
accurate. In a pending nonprovisional application, failure to timely 
reply to such a notice will result in abandonment of the application.
* * * * *
    (c) If an application or a patent under reexamination and at least 
one other application naming different inventors are owned by the same 
person and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the Office may require the assignee to 
state whether the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the 
prior inventor. Even if the claimed inventions were commonly owned, or 
subject to an obligation of assignment to the same person, at the time 
the later invention was made, the conflicting claims may be rejected 
under the doctrine of double patenting in view of such commonly owned 
or assigned applications or patents under reexamination.
    20. Section 1.83 is amended by revising paragraph (a) to read as 
follows.


Sec.  1.83  Content of drawing.

    (a) The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims. However, conventional 
features disclosed in the description and claims, where their detailed 
illustration is not essential for a proper understanding of the 
invention, should be illustrated in the drawing in the form of a 
graphical drawing symbol or a labeled representation (e.g., a labeled 
rectangular box). In addition, tables and sequence listings that are 
included in the specification are not permitted to be included in the 
drawings.
* * * * *
    21. Section 1.84 is amended by revising paragraphs (a)(2) and (c) 
to read as follows:


Sec.  1.84  Standards for drawings.

    (a) * * *
    (2) Color. On rare occasions, color drawings may be necessary as 
the only practical medium by which to disclose the subject matter 
sought to be patented

[[Page 53852]]

in a utility or design patent application or the subject matter of a 
statutory invention registration. The color drawings must be of 
sufficient quality such that all details in the drawings are 
reproducible in black and white in the printed patent. Color drawings 
are not permitted in international applications (see PCT Rule 11.13), 
or in an application, or copy thereof, submitted under the Office 
electronic filing system. The Office will accept color drawings in 
utility or design patent applications and statutory invention 
registrations only after granting a petition filed under this paragraph 
explaining why the color drawings are necessary. Any such petition must 
include the following:
    (i) The fee set forth in Sec.  1.17(h);
    (ii) Three (3) sets of color drawings; and
    (iii) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:
    The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided by the Office upon 
request and payment of the necessary fee.
* * * * *
    (c) Identification of drawings. Identifying indicia should be 
provided, and if provided, should include the title of the invention, 
inventor's name, and application number, or docket number (if any) if 
an application number has not been assigned to the application. If this 
information is provided on the front of each sheet, it must be placed 
to the left of the center within the top margin.
* * * * *
    22. Section 1.91 is amended by adding paragraph (c) to read as 
follows:


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

* * * * *
    (c) Unless the model or exhibit substantially conforms to the 
requirements of Sec.  1.52 or Sec.  1.84 under paragraph (a)(1) of this 
section, it must be accompanied by photographs that show multiple views 
of the material features of the model or exhibit and that substantially 
conform to the requirements of Sec.  1.84.
    23. Section 1.94 is revised to read as follows:


Sec.  1.94  Return of models, exhibits or specimens.

    (a) Models, exhibits, or specimens may be returned to the applicant 
if no longer necessary for the conduct of business before the Office. 
When applicant is notified that a model, exhibit, or specimen is no 
longer necessary for the conduct of business before the Office and will 
be returned, applicant must arrange for the return of the model, 
exhibit, or specimen at the applicant's expense. The Office will 
dispose of perishables without notice to applicant unless applicant 
notifies the Office upon submission of a perishable model, exhibit or 
specimen that a return is desired and makes arrangements for its return 
promptly upon notification by the Office that the perishable model, 
exhibit or specimen is no longer necessary for the conduct of business 
before the Office.
    (b) Applicant is responsible for retaining the actual model, 
exhibit, or specimen for the enforceable life of any patent resulting 
from the application. The provisions of this paragraph do not apply to 
a model or exhibit that substantially conforms to the requirements of 
Sec.  1.52 or Sec.  1.84, where the model, exhibit or specimen has been 
described by photographs that substantially conform to Sec.  1.84, or 
where the model, exhibit or specimen is perishable.
    (c) Where applicant is notified, pursuant to paragraph (a) of this 
section, of the need to arrange for return of a model, exhibit or 
specimen, applicant must arrange for the return within the period set 
in such notice, to avoid disposal of the model, exhibit or specimen by 
the Office. Extensions of time are available under Sec.  1.136, except 
in the case of perishables. Failure to establish that the return of the 
item has been arranged for within the period set or failure to have the 
item removed from Office storage within a reasonable amount of time 
notwithstanding any arrangement for return, will permit the Office to 
dispose of the model, exhibit or specimen.
    24. Section 1.98 is amended by revising paragraphs (a)(1), (a)(2), 
and (e) to read as follows:


Sec.  1.98  Content of information disclosure statement.

    (a) * * *
    (1) A list of all patents, publications, applications, or other 
information submitted for consideration by the Office. U.S. patents and 
U.S. patent application publications must be listed in a section 
separately from citations of other documents. Each page of the list 
must include:
    (i) The application number of the application in which the 
information disclosure statement is being submitted;
    (ii) A column that provides a space next to each document to be 
considered for the examiner's initials; and
    (iii) A heading that clearly indicates that the list is an 
information disclosure statement.
    (2) A legible copy of:
    (i) Each patent;
    (ii) Each publication or that portion which caused it to be listed;
    (iii) For each cited pending unpublished U.S. application, the 
application specification including the claims, and any drawing of the 
application, or that portion of the application which caused it to be 
listed including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed
* * * * *
    (e) The requirement in paragraph (a)(2) of this section for a copy 
of the U.S. patents or U.S. patent application publications listed in 
an information disclosure statement does not apply:
    (1) In any national patent application filed after June 30, 2003;
    (2) In any international application that has entered the national 
stage under 35 U.S.C. 371 after June 30, 2003; or
    (3) In any information disclosure statement submitted in compliance 
with the Office's electronic filing system.
    25. Section 1.102 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.102  Advancement of examination.

* * * * *
    (c) A petition to make an application special may be filed without 
a fee if the basis for the petition is:
    (1) The applicant's age or health; or
    (2) That the invention will materially:
    (i) Enhance the quality of the environment;
    (ii) Contribute to the development or conservation of energy 
resources; or
    (iii) Contribute to countering terrorism.
* * * * *
    26. Section 1.103 is amended by revising paragraph (a)(2) to read 
as follows:


Sec.  1.103  Suspension of action by the Office.

    (a) * * *
    (2) The fee set forth in Sec.  1.17(g), unless such cause is the 
fault of the Office.
* * * * *
    27. Section 1.105 is amended by redesignating paragraph (a)(3) as 
(a)(4) and revising it, and adding new paragraphs (a)(1)(viii) and 
(a)(3) to read as follows:


Sec.  1.105  Requirements for information.

    (a)(1) * * *

[[Page 53853]]

    (viii) Technical information known to applicant. Technical 
information known to applicant concerning the interpretation of the 
related art, the disclosure, the claimed subject matter, other 
information pertinent to patentability, or the accuracy of the 
examiner's stated interpretation of such items.
* * * * *
    (3) Requirements for information may be presented in any 
appropriate form, for example:
    (i) A requirement for documents;
    (ii) Interrogatories in the form of specific questions seeking 
applicant's knowledge; or
    (iii) Stipulations in the form of statements with which the 
applicant may agree or disagree.
    (4) Any reply to a requirement for information, apart from 
requirements for answers based on applicant's opinion, that states that 
the information required to be submitted is unknown and/or is not 
readily available to the party or parties from which it was requested 
will be accepted as a complete reply. Any reply to a requirement for 
answers based on applicant's opinion that states that an opinion is not 
held by the party or parties from which it was requested will be 
accepted as a complete reply.
* * * * *
    28. Section 1.111 is amended by revising paragraph (a)(2) to read 
as follows:


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

    (a) * * *
    (2) Supplemental replies. (i) A supplemental reply will not be 
entered as matter of right except as provided in paragraph (a)(2)(ii) 
of this section. The Office may enter a supplemental reply that is 
filed before the expiration of the statutory period (i.e., within six 
months from the mailing date of the non-final Office action) if the 
supplemental reply is clearly limited to:
    (A) Cancellation of a claim(s);
    (B) Adoption of an examiner suggestion(s); or
    (C) Placement of the application in condition for allowance.
    (ii) A supplemental reply will be entered if the supplemental reply 
is filed within the period during which action by the Office is 
suspended under Sec.  1.103(a) through (c).
* * * * *
    29. Section 1.115 is revised to read as follows:


Sec.  1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (see Sec.  1.6) on or before the mail date of the first Office 
action under Sec.  1.104.
    (b) A preliminary amendment submitted on or prior to the filing 
date of an application is part of the original disclosure of the 
application. If a preliminary amendment is determined to contain matter 
not otherwise included in the contents of the originally filed 
specification, including claims, and drawings, and the preliminary 
amendment is not specifically referred to in the oath or declaration 
under Sec.  1.63, a new oath or declaration in compliance with Sec.  
1.63 will be required.
    (c)(1) A preliminary amendment will be entered unless disapproved 
by the Director.
    (i) A preliminary amendment seeking cancellation of all the claims 
without presenting any new or substitute claims will be disapproved. 
However, for filing and fee calculation purposes, such an amendment 
will cause the application to be treated as containing a single claim, 
which would be the first independent claim.
    (ii) A preliminary amendment may be disapproved if the preliminary 
amendment unduly interferes with the preparation of a first Office 
action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (A) The state of preparation of a first Office action as of the 
date of receipt (see Sec.  1.6) of the preliminary amendment by the 
Office; and
    (B) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (2) A preliminary amendment will not be disapproved under 
(c)(1)(ii) of this section if it is filed no later than:
    (i) Three months from the filing date of an application under Sec.  
1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec.  1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth in Sec.  1.491 in an international application.
    (d) The time periods specified in paragraph (c)(2) of this section 
are not extendable.
    30. Section 1.116 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.116  Amendments after final action or appeal.

* * * * *
    (b) After a final rejection or other final action (see Sec.  1.113) 
in an application or in an ex parte reexamination filed under Sec.  
1.510, or an action closing prosecution (see Sec.  1.949) in an inter 
partes reexamination filed under Sec.  1.913, amendments may be made 
canceling claims or complying with any requirement of form expressly 
set forth in a previous Office action. Amendments presenting rejected 
claims in better form for consideration on appeal may be admitted. The 
admission of, or refusal to admit, any amendment after a final 
rejection, a final action, an action closing prosecution, or any 
related proceedings will not operate to relieve the application or 
reexamination proceeding from its condition as subject to appeal or to 
save the application from abandonment under Sec.  1.135, or the 
reexamination prosecution from concluding under Sec.  1.550(d) or Sec.  
1.957(b) or limitation of further prosecution under Sec.  1.957(c). No 
amendment can be made in an inter partes reexamination proceeding after 
the right of appeal notice under Sec.  1.953 except as provided for in 
paragraph (d) of this section.
* * * * *
    31. Section 1.131 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.131  Affidavit or declaration of prior invention.

* * * * *
    (b) The showing of facts shall be such, in character and weight, as 
to establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date 
of the reference coupled with due diligence from prior to said date to 
a subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or records, or photocopies thereof, must 
accompany and form part of the affidavit or declaration or their 
absence must be satisfactorily explained.
    32. Section 1.136 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.136  Extensions of time.

* * * * *
    (b) When a reply cannot be filed within the time period set for 
such reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on 
which such reply is due, but the mere filing of such a request will not 
affect any extension under this paragraph. In no situation can any 
extension carry the date on which reply is due beyond the maximum time 
period set by statute. See Sec.  1.304 for extensions of time to appeal 
to the U.S. Court of Appeals for the Federal Circuit or to commence a

[[Page 53854]]

civil action; Sec.  1.645 for extensions of time in interference 
proceedings; Sec.  1.550(c) for extensions of time in ex parte 
reexamination proceedings; and Sec.  1.956 for extensions of time in 
inter partes reexamination proceedings. Any request under this section 
must be accompanied by the petition fee set forth in Sec.  1.17(g).
* * * * *
    33. Section 1.137 is amended by revising its heading, the 
introductory text of paragraph (a), the introductory text of paragraph 
(b), paragraphs (d)(3) and (e) to read as follows:


Sec.  1.137  Revival of abandoned application, concluded reexamination 
prosecution, or lapsed patent.

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination prosecution concluded 
under Sec.  1.550(d) or Sec.  1.957(b) or limited as to further 
prosecution under Sec.  1.957(c), or a lapsed patent. A grantable 
petition pursuant to this paragraph must be accompanied by:
* * * * *
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
prosecution concluded under Sec.  1.550(d) or Sec.  1.957(b) or limited 
as to further prosecution under Sec.  1.957(c), or a lapsed patent. A 
grantable petition pursuant to this paragraph must be accompanied by:
* * * * *
    (d) * * *
    (3) The provisions of paragraph (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 
8, 1995, to lapsed patents, to reissue applications, or to 
reexamination proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
concluded reexamination prosecution, or lapsed patent upon petition 
filed pursuant to this section, to be considered timely, must be filed 
within two months of the decision refusing to revive or within such 
time as set in the decision. Unless a decision indicates otherwise, 
this time period may be extended under:
    (1) The provisions of Sec.  1.136 for an abandoned application or 
lapsed patent;
    (2) The provisions of Sec.  1.550(c) for a concluded ex parte 
reexamination prosecution filed under Sec.  1.510; or
    (3) The provisions of Sec.  1.956 for a concluded inter partes 
reexamination prosecution or an inter partes reexamination limited as 
to further prosecution filed under Sec.  1.913.
* * * * *
    34. Section 1.165 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.165  Plant drawings.

* * * * *
    (b) The drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs must be submitted.
    35. Section 1.173 is amended by revising paragraph (b) introductory 
text to read as follows:


Sec.  1.173  Reissue specification, drawings, and amendments.

* * * * *
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made, as follows:
* * * * *
    36. Section 1.175 is amended by adding a new paragraph (e) to read 
as follows:


Sec.  1.175  Reissue oath or declaration.

* * * * *
    (e) The filing of any continuing reissue application which does not 
replace its parent reissue application must include an oath or 
declaration which, pursuant to paragraph (a)(1) of this section, 
identifies at least one error in the original patent which has not been 
corrected by the parent reissue application or an earlier reissue 
application. All other requirements relating to an oath or declaration 
must also be met.
    37. Section 1.178 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.178  Original patent; continuing duty of applicant.

    (a) The application for reissue of a patent shall constitute an 
offer to surrender that patent, and the surrender shall take effect 
upon reissue of the patent. Until a reissue application is granted, the 
original patent shall remain in effect.
* * * * *


Sec.  1.179  [Removed and Reserved].

    38. Section 1.179 is removed and reserved.
    39. Section 1.182 is revised to read as follows:


Sec.  1.182  Questions not specifically provided for.

    All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each 
situation by or under the authority of the Director, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition seeking 
a decision under this section must be accompanied by the petition fee 
set forth in Sec.  1.17(f).
    40. Section 1.183 is revised to read as follows:


Sec.  1.183  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which is not a requirement 
of the statutes may be suspended or waived by the Director or the 
Director's designee, sua sponte, or on petition of the interested 
party, subject to such other requirements as may be imposed. Any 
petition under this section must be accompanied by the petition fee set 
forth in Sec.  1.17(f).
    41. Section 1.213 is revised to read as follows:


Sec.  1.213  Nonpublication request; rescission of a nonpublication 
request; notice of subsequent foreign filing.

    (a) Nonpublication request and certification. If the invention 
disclosed in an application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication of applications 
eighteen months after filing, the application will not be published 
under 35 U.S.C. 122(b) and Sec.  1.211 provided that:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application 
is not to be published under 35'U.S.C. 122(b);
    (3) The request contains a certification that the invention 
disclosed in the application has not been and will not be the subject 
of an application filed in another country, or under a multilateral 
international agreement, that requires publication of applications at 
eighteen months after filing; and
    (4) The request is signed in compliance with Sec.  1.33(b). The 
certification under 35 U.S.C. 122(b)(2)(B)(i) and paragraph (a)(3) of 
this section is not appropriate unless the person signing the request 
has made an

[[Page 53855]]

actual inquiry consistent with the requirements of Sec.  10.18(b) of 
this chapter with respect to the application to which the request and 
certification pertains to determine that:
    (i) The application has not been the subject of an application 
filed in another country, or under a multilateral international 
agreement, that requires publication of applications at eighteen months 
after filing; and
    (ii) The applicant's intent at the time the nonpublication request 
is being filed is that the application will not be the subject of an 
application filed in another country, or under a multilateral 
international agreement, that requires publication of applications at 
eighteen months after filing.
    (b) Rescission of a nonpublication request. The applicant may 
rescind a previously filed nonpublication request at any time. The mere 
filing of a request under 35 U.S.C. 122(b)(2)(B)(ii) and this paragraph 
to rescind a previously filed nonpublication request does not comply 
with the notice requirement of 35 U.S.C. 122(b)(2)(B)(iii) and 
paragraph (c) of this section. The provisions of Sec.  1.8 do not apply 
in determining whether such an application has been filed before filing 
a request under this paragraph to rescind a previously filed 
nonpublication request. A request to rescind a nonpublication request 
under paragraph (a) of this section must:
    (1) Identify the application to which it is directed;
    (2) State in a conspicuous manner that the request that the 
application is not to be published under 35 U.S.C. 122(b) is rescinded; 
and
    (3) Be signed in compliance with Sec.  1.33(b). A request under 
paragraph (b) of this section to rescind a nonpublication request is 
not appropriate unless the person signing the request has made an 
inquiry consistent with the requirements of Sec.  10.18(b) of this 
chapter and determined that a nonpublication request under paragraph 
(a) of this section was previously filed in the application in which 
the request to rescind a nonpublication request is directed.
    (c) Notification of subsequent foreign filing. An applicant who has 
submitted a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) and 
paragraph (a) of this section, but before filing a request under 35 
U.S.C. 122(b)(2)(B)(ii) and paragraph (b) of this section to rescind 
the previously filed nonpublication request, files an application 
directed to the invention disclosed in the application in which the 
nonpublication request was submitted in another country, or under a 
multilateral international agreement, that requires publication of 
applications eighteen months after filing, must notify the Office of 
such filing within forty-five days after the date of the filing in 
another country, or under a multilateral international agreement. The 
provisions of Sec.  1.8 do not apply in determining whether such an 
application has been filed before filing a request under paragraph (b) 
of this section to rescind a previously filed nonpublication request. 
The mere filing of a request under 35 U.S.C. 122(b)(2)(B)(ii) and 
paragraph (b) of this section to rescind a previously filed 
nonpublication request does not comply with the notice requirement of 
35 U.S.C. 122(b)(2)(B)(iii) and this paragraph. The failure to timely 
notify the Office of the filing in another country, or under a 
multilateral international agreement, shall result in abandonment of 
the application in which the nonpublication request was submitted 
(35'U.S.C. 122(b)(2)(B)(iii)).
    (d) Publication after rescission or notice of foreign filing. If an 
applicant who has submitted a nonpublication request under 35 U.S.C. 
122(b)(2)(B)(i) and paragraph (a) of this section, subsequently files a 
request under 35 U.S.C. 122(b)(2)(B)(ii) and paragraph (b) of this 
section to rescind the nonpublication request or files a notice of a 
filing in another country, or under a multilateral international 
agreement, under 35 U.S.C. 122(b)(2)(B)(iii) and paragraph (c) of this 
section, the application shall be published as soon as is practical 
after the expiration of a period of eighteen months from the earliest 
filing date for which a benefit is sought under title 35, United States 
Code (35 U.S.C. 122(b)(2)(B)(iv)).
    42. Section 1.215 is amended by revising paragraphs (a) and (c) to 
read as follows:


Sec.  1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the application papers 
deposited on the filing date of the application, as well as the 
executed oath or declaration submitted to complete the application, any 
application papers or drawings submitted in reply to a preexamination 
notice requiring a title and abstract in compliance with Sec.  1.72, 
application papers in compliance with Sec.  1.52, drawings in 
compliance with Sec.  1.84, or a sequence listing in compliance with 
Sec. Sec.  1.821 through 1.825, and any replacement drawings received 
with the processing fee set forth in Sec.  1.17(i) within the period 
set forth in paragraph (c) of this section, except as otherwise 
provided in this section. The patent application publication will not 
include any amendments, including preliminary amendments, unless 
applicant supplies a copy of the application containing the amendment 
pursuant to paragraph (c) of this section.
* * * * *
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended during examination, provided that 
applicant supplies such a copy in compliance with the Office electronic 
filing system requirements within one month of the mailing date of the 
first Office communication that includes a confirmation number for the 
application, or within fourteen months of the earliest filing date for 
which a benefit is sought under title 35, United States Code, whichever 
is later.
* * * * *
    43. Section 1.291 is revised to read as follows:


Sec.  1.291  Protests by the public against pending applications.

    (a) A protest may be filed by a member of the public against a 
pending application, and will be matched with the application file if 
it adequately identifies the patent application to the extent that the 
Office can timely match it. A protest which does not adequately 
identify a pending patent application will not be considered by the 
Office other than to return it to the protestor.
    (b) Where the protest adequately identifies the patent application 
to the extent that the Office can timely match it with an application, 
the protest will be entered into the record of the application if it:
    (1) Is submitted:
    (i) Prior to the date the application was published under Sec.  
1.211, or the notice of allowance under Sec.  1.311 was mailed, 
whichever occurs first; or
    (ii) At any time if it is accompanied by the written consent of the 
applicant to the filing of the protest being submitted;
    (2) Is served upon the applicant in accordance with Sec.  1.248, or 
filed with the Office in duplicate in the event service is not 
possible; and
    (3) Includes a statement identifying the real party in interest on 
whose behalf the protest is being filed to the extent necessary for 
determination of whether a party who may file a subsequent protest is 
in privity with the

[[Page 53856]]

identified real party in interest. Where anonymity of the real party in 
interest is desired, the protestor may provide, in place of the 
statement identifying the real party in interest, a substitute 
statement that the protest is, to the best of the knowledge of the 
submitting party, the first protest being submitted by the real party 
in interest. The substitute statement must be accompanied by a 
processing fee under Sec.  1.17(i).
    (c) Where the protest is entered into the record of the 
application, the items of information submitted with the protest, and 
the argument directed toward such items, will be considered by the 
examiner, if the protest includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each item listed 
pursuant to paragraph (c)(1);
    (3) A copy of each listed patent, publication, or other item of 
information in written form, or at least the pertinent portions 
thereof;
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information relied upon; and
    (5) If a second or subsequent protest by the same party, an 
explanation why the additional art issues are significantly different 
and why they were not earlier presented.
    (d) A member of the public filing a protest in an application under 
this section will not receive any communication from the Office 
relating to the protest, other than the return of a self-addressed 
postcard which the member of the public may include with the protest in 
order to receive an acknowledgment by the Office that the protest has 
been received. The limited involvement of the member of the public 
filing a protest pursuant to this section ends with the filing of the 
protest, and no further submission on behalf of the protestor will be 
considered, unless the submission is accompanied by an explanation 
pursuant to paragraph (c)(5) of this section.
    (e) Where a protest raising inequitable conduct issues satisfies 
the provisions of this section for entry, it will be entered into the 
application file, generally without comment on the inequitable conduct 
issues raised in it.
    (f) In the absence of a request by the Office, an applicant has no 
duty to, and need not, reply to a protest.
    (g) In order for a protest submitted after the application 
publication date to be accepted, the protest must be accompanied by the 
written consent of the applicant to the filing of the protest being 
submitted.
    44. Section 1.295 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.295  Review of decision finally refusing to publish a statutory 
invention registration.

    (a) Any requester who is dissatisfied with the final refusal to 
publish a statutory invention registration for reasons other than 
compliance with 35 U.S.C. 112 may obtain review of the refusal to 
publish the statutory invention registration by filing a petition to 
the Director accompanied by the fee set forth in Sec.  1.17(g) within 
one month or such other time as is set in the decision refusing 
publication. Any such petition should comply with the requirements of 
Sec.  1.181(b). The petition may include a request that the petition 
fee be refunded if the final refusal to publish a statutory invention 
registration for reasons other than compliance with 35 U.S.C. 112 is 
determined to result from an error by the Patent and Trademark Office.
* * * * *
    45. Section 1.296 is revised to read as follows:


Sec.  1.296  Withdrawal of request for publication of statutory 
invention registration.

    A request for a statutory invention registration, which has been 
filed, may be withdrawn prior to the date on which the notice of the 
intent to publish a statutory invention registration issued pursuant to 
Sec.  1.294(c) by filing a request to withdraw the request for 
publication of a statutory invention registration. The request to 
withdraw may also include a request for a refund of any amount paid in 
excess of the application filing fee and a handling fee of $130.00 
which will be retained. Any request to withdraw the request for 
publication of a statutory invention registration filed on or after the 
date on which the notice of intent to publish issued pursuant to Sec.  
1.294(c) must be in the form of a petition accompanied by the fee set 
forth in Sec.  1.17(g).
    46. Section 1.311 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.311  Notice of allowance.

* * * * *
    (b) An authorization to charge the issue fee or other post-
allowance fees set forth in Sec.  1.18 to a deposit account may be 
filed in an individual application only after mailing of the notice of 
allowance. The submission of either of the following after the mailing 
of a notice of allowance will operate as a request to charge the 
correct issue fee or any publication fee due to any deposit account 
identified in a previously filed authorization to charge such fees:
    (1) An incorrect issue fee or publication fee; or
    (2) A fee transmittal form (or letter) for payment of issue fee or 
publication fee.
    47. Section 1.324 is amended by revising paragraph (a) and the 
introductory text of paragraph (b) to read as follows:


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

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, the Director, pursuant to 35 U.S.C. 256, may, on application 
of all the parties and assignees, or on order of a court before which 
such matter is called in question, issue a certificate naming only the 
actual inventor or inventors. A request to correct inventorship of a 
patent involved in an interference must comply with the requirements of 
this section and must be accompanied by a motion under Sec.  1.634.
    (b) Any request to correct inventorship of a patent pursuant to 
paragraph (a) of this section must be accompanied by:
* * * * *
    48. Section 1.377 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.377  Review of decision refusing to accept and record payment 
of a maintenance fee filed prior to expiration of patent.

* * * * *
    (b) Any petition under this section must be filed within 2 months 
of the action complained of, or within such other time as may be set in 
the action complained of, and must be accompanied by the fee set forth 
in Sec.  1.17(g). The petition may include a request that the petition 
fee be refunded if the refusal to accept and record the maintenance fee 
is determined to result from an error by the Patent and Trademark 
Office.
* * * * *
    49. Section 1.378 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.378  Acceptance of delayed payment of maintenance fee in 
expired patent to reinstate patent.

* * * * *
    (e) Reconsideration of a decision refusing to accept a maintenance 
fee upon petition filed pursuant to paragraph (a) of this section may 
be

[[Page 53857]]

obtained by filing a petition for reconsideration within two months of, 
or such other time as set in, the decision refusing to accept the 
delayed payment of the maintenance fee. Any such petition for 
reconsideration must be accompanied by the petition fee set forth in 
Sec.  1.17(f). After decision on the petition for reconsideration, no 
further reconsideration or review of the matter will be undertaken by 
the Director. If the delayed payment of the maintenance fee is not 
accepted, the maintenance fee and the surcharge set forth in Sec.  
1.20(i) will be refunded following the decision on the petition for 
reconsideration, or after the expiration of the time for filing such a 
petition for reconsideration, if none is filed. Any petition fee under 
this section will not be refunded unless the refusal to accept and 
record the maintenance fee is determined to result from an error by the 
Patent and Trademark Office.
    50. Section 1.502 is revised to read as follows:


Sec.  1.502  Processing of prior art citations during an ex parte 
reexamination proceeding.

    Citations by the patent owner under Sec.  1.555 and by an ex parte 
reexamination requester under either Sec.  1.510 or Sec.  1.535 will be 
entered in the reexamination file during a reexamination proceeding. 
The entry in the patent file of citations submitted after the date of 
an order to reexamine pursuant to Sec.  1.525 by persons other than the 
patent owner, or an ex parte reexamination requester under either Sec.  
1.510 or Sec.  1.535, will be delayed until the reexamination 
proceeding has been terminated by the issuance and publication of a 
reexamination certificate. See Sec.  1.902 for processing of prior art 
citations in patent and reexamination files during an inter partes 
reexamination proceeding filed under Sec.  1.913.
    51. Section 1.530 is amended by revising paragraph (k) to read as 
follows:


Sec.  1.530  Statement by patent owner in ex parte reexamination; 
amendment by patent owner in ex parte or inter partes reexamination; 
inventorship change in ex parte or inter partes reexamination.

* * * * *
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been 
entered, the proposed amendments will not be effective until the 
reexamination certificate is issued and published.
* * * * *
    52. Section 1.550 is amended by revising paragraphs (c) and (d) to 
read as follows:


Sec.  1.550  Conduct of ex parte reexamination proceedings.

* * * * *
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec.  1.17(g). See Sec.  1.304(a) for extensions of time 
for filing a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing a civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under Sec.  1.560(b), the prosecution in the ex parte 
reexamination proceeding will be concluded, and the Director will 
proceed to issue and publish a certificate terminating the 
reexamination proceeding under Sec.  1.570 in accordance with the last 
action of the Office.
* * * * *
    53. Section 1.570 is amended by revising its heading and paragraphs 
(a), (b) and (d) to read as follows:


Sec.  1.570  Issuance and publication of ex parte reexamination 
certificate terminates ex parte reexamination proceeding.

    (a) To terminate an ex parte reexamination proceeding, the Director 
will issue and publish an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued and 
published in each patent in which an ex parte reexamination proceeding 
has been ordered under Sec.  1.525 and has not been merged with any 
inter partes reexamination proceeding pursuant to Sec.  1.989(a). Any 
statutory disclaimer filed by the patent owner will be made part of the 
ex parte reexamination certificate.
* * * * *
    (d) If an ex parte reexamination certificate has been issued and 
published which cancels all of the claims of the patent, no further 
Office proceedings will be conducted with that patent or any reissue 
applications or any reexamination requests relating thereto.
* * * * *
    54. Section 1.644 is amended by revising paragraphs (e) and (f) to 
read as follows:


Sec.  1.644  Petitions in interferences.

* * * * *
    (e) Any petition under paragraph (a) of this section shall be 
accompanied by the petition fee set forth in Sec.  1.17(f).
    (f) Any request for reconsideration of a decision by the Director 
shall be filed within 14 days of the decision of the Director and must 
be accompanied by the fee set forth in Sec.  1.17(f). No opposition to 
a request for reconsideration shall be filed unless requested by the 
Director. The decision will not ordinarily be modified unless such an 
opposition has been requested by the Director.
* * * * *
    55. Section 1.666 is amended by revising paragraphs (b) and (c) to 
read as follows:


Sec.  1.666  Filing of interference settlement agreements.

* * * * *
    (b) If any party filing the agreement or understanding under 
paragraph (a) of this section so requests, the copy will be kept 
separate from the file of the interference, and made available only to 
Government agencies on written request, or to any person upon petition 
accompanied by the fee set forth in Sec.  1.17(f) and on a showing of 
good cause.
    (c) Failure to file the copy of the agreement or understanding 
under paragraph (a) of this section will render permanently 
unenforceable such agreement or understanding and any patent of the 
parties involved in the interference or any patent subsequently issued 
on any application of the parties so involved. The Director may, 
however, upon petition accompanied by the fee set forth in Sec.  
1.17(f) and on a showing of good cause for failure to file within the 
time prescribed, permit the filing of the agreement or understanding 
during the six-month period subsequent to the termination of the 
interference as between the parties to the agreement or understanding.
    56. Section 1.704 is amended by revising paragraph (d) to read as 
follows.


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (d) A paper containing only an information disclosure statement in 
compliance with Sec. Sec.  1.97 and 1.98 will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination)

[[Page 53858]]

of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) 
of this section if it is accompanied by a statement that each item of 
information contained in the information disclosure statement was first 
cited in any communication from a foreign patent office in a 
counterpart application and that this communication was not received by 
any individual designated in Sec.  1.56(c) more than thirty days prior 
to the filing of the information disclosure statement. This thirty-day 
period is not extendable.
* * * * *
    57. Section 1.705 is amended by revising paragraph (d) to read as 
follows:


Sec.  1.705  Patent term adjustment determination.

* * * * *
    (d) If there is a revision to the patent term adjustment indicated 
in the notice of allowance, the patent will indicate the revised patent 
term adjustment. If the patent indicates a revised patent term 
adjustment, any request for reconsideration of the patent term 
adjustment indicated in the patent must be filed within thirty days of 
the date the patent issued and must comply with the requirements of 
paragraphs (b)(1) and (b)(2) of this section. Any request for 
reconsideration under this section that raises issues that were raised, 
or could have been raised, in an application for patent term adjustment 
under paragraph (b) of this section may be dismissed as untimely.
* * * * *
    58. Section 1.741 is amended by revising paragraph (b) to read as 
follows:


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

* * * * *
    (b) If an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is 
incomplete, or review of the filing date accorded an application under 
this section, applicant must file a petition pursuant to this paragraph 
accompanied by the fee set forth in Sec.  1.17(f) within two months of 
the mail date of the notice that the application is incomplete, or the 
notice according the filing date complained of. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions of Sec.  1.136.
    59. Section 1.902 is revised to read as follows:


Sec.  1.902  Processing of prior art citations during an inter partes 
reexamination proceeding.

    Citations by the patent owner in accordance with Sec.  1.933 and by 
an inter partes reexamination third party requester under Sec.  1.915 
or Sec.  1.948 will be entered in the inter partes reexamination file. 
The entry in the patent file of other citations submitted after the 
date of an order for reexamination pursuant to Sec.  1.931 by persons 
other than the patent owner, or the third party requester under either 
Sec.  1.915 or Sec.  1.948, will be delayed until the inter partes 
reexamination proceeding has been terminated by the issuance and 
publication of a reexamination certificate. See Sec.  1.502 for 
processing of prior art citations in patent and reexamination files 
during an ex parte reexamination proceeding filed under Sec.  1.510.
    60. Section 1.953 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.953  Examiner's Right of Appeal Notice in inter partes 
reexamination.

* * * * *
    (c) The Right of Appeal Notice shall be a final action, which 
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a proposed rejection, an identification of 
the status of each claim, and the reasons for decisions favorable to 
patentability and/or the grounds of rejection for each claim. No 
amendment can be made in response to the Right of Appeal Notice. The 
Right of Appeal Notice shall set a one-month time period for either 
party to appeal. If no notice of appeal is filed, prosecution in the 
inter partes reexamination proceeding will be concluded, and the 
Director will proceed to issue and publish a certificate under Sec.  
1.997 in accordance with the Right of Appeal Notice.
    61. The subheading immediately preceding Sec.  1.956 is revised to 
read as follows:

EXTENSIONS OF TIME, CONCLUDING OF REEXAMINATION PROSECUTION, AND 
PETITIONS TO REVIVE IN INTER PARTES REEXAMINATION

    62. Section 1.956 is revised to read as follows:


Sec.  1.956  Patent owner extensions of time in inter partes 
reexamination.

    The time for taking any action by a patent owner in an inter partes 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec.  1.17(g). See Sec.  1.304(a) for extensions of time 
for filing a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit.
    63. Section 1.957 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.957  Failure to file a timely, appropriate or complete response 
or comment in inter partes reexamination.

* * * * *
    (b) If no claims are found patentable, and the patent owner fails 
to file a timely and appropriate response in an inter partes 
reexamination proceeding, the prosecution in the reexamination 
proceeding will be concluded and the Director will proceed to issue and 
publish a certificate terminating the reexamination proceeding under 
Sec.  1.997 in accordance with the last action of the Office.
* * * * *
    64. Section 1.958 is amended by revising its heading to read as 
follows:


Sec.  1.958  Petition to revive inter partes reexamination prosecution 
concluded for lack of patent owner response.

* * * * *
    65. Section 1.979 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.979  Action following decision by the Board of Patent Appeals 
and Interferences or dismissal of appeal in inter partes reexamination.

* * * * *
    (f) An appeal by a third party requester is considered terminated 
by the dismissal of the third party requester's appeal, the failure of 
the third party requester to timely request rehearing under Sec.  
1.979(a) or (c), or a final decision under Sec.  1.979(e). The date of 
such termination is the date on which the appeal is dismissed, the date 
on which the time for rehearing expires, or the date on which the 
decision of the Board of Patent Appeals and Interferences is final. An 
appeal by the patent owner is considered terminated by the dismissal of 
the patent owner's appeal, the failure of the patent owner to timely 
request rehearing under Sec.  1.979(a) or (c), or the failure of the 
patent owner to timely file an appeal to the U.S. Court of Appeals for 
the Federal Circuit under Sec.  1.983. The date of such termination is 
the date on which the appeal is dismissed, the date on which the time 
for rehearing expires, or the date on which the time for the patent 
owner's appeal to the U.S. Court of Appeals for the Federal Circuit

[[Page 53859]]

expires. If an appeal to the U.S. Court of Appeals for the Federal 
Circuit has been filed, the patent owner's appeal is considered 
terminated when the mandate is issued by the Court. Upon termination of 
an appeal, if no other appeal is present, the prosecution in the 
reexamination proceeding will be concluded and the Director will issue 
and publish a certificate under Sec.  1.997 terminating the 
reexamination proceeding.
* * * * *
    66. Section 1.997 is amended by revising its heading and paragraphs 
(a), (b), and (d) to read as follows:


Sec.  1.997  Issuance and publication of inter partes reexamination 
certificate terminates inter partes reexamination proceeding.

    (a) To terminate an inter partes reexamination proceeding, the 
Director will issue and publish an inter partes reexamination 
certificate in accordance with 35 U.S.C. 316 setting forth the results 
of the inter partes reexamination proceeding and the content of the 
patent following the inter partes reexamination proceeding.
    (b) A certificate will be issued and published in each patent in 
which an inter partes reexamination proceeding has been ordered under 
Sec.  1.931. Any statutory disclaimer filed by the patent owner will be 
made part of the certificate.
* * * * *
    (d) If a certificate has been issued and published which cancels 
all of the claims of the patent, no further Office proceedings will be 
conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
* * * * *

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

    67. The authority citation for 37 CFR part 5 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the 
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 
2011 et seq.; the Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 
3201 et seq.; and the delegations in the regulations under these 
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR 
810.7).

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


Sec.  5.12  Petition for license.

* * * * *
    (b) A petition for license must include the fee set forth in Sec.  
1.17(g) of this chapter, the petitioner's address, and full 
instructions for delivery of the requested license when it is to be 
delivered to other than the petitioner. The petition should be 
presented in letter form.
    69. Section 5.15 is amended by revising paragraph (c) to read as 
follows:


Sec.  5.15  Scope of license.

* * * * *
    (c) A license granted under Sec.  5.12(b) pursuant to Sec.  5.13 or 
Sec.  5.14 shall have the scope indicated in paragraph (a) of this 
section, if it is so specified in the license. A petition, accompanied 
by the required fee (Sec.  1.17(g)), may also be filed to change a 
license having the scope indicated in paragraph (b) of this section to 
a license having the scope indicated in paragraph (a) of this section. 
No such petition will be granted if the copy of the material filed 
pursuant to Sec.  5.13 or any corresponding United States application 
was required to be made available for inspection under 35 U.S.C. 181. 
The change in the scope of a license will be effective as of the date 
of the grant of the petition.
* * * * *
    70. Section 5.25 is amended by revising paragraph (a)(4) to read as 
follows:


Sec.  5.25  Petition for retroactive license.

    (a) * * *
    (4) The required fee (see Sec.  1.17(g)). The explanation in 
paragraph (a)(3)(iii) must include a showing of facts rather than a 
mere allegation of action through error and without deceptive intent. 
The showing of facts as to the nature of the error should include 
statements by those persons having personal knowledge of the acts 
regarding filing in a foreign country and should be accompanied by 
copies of any necessary supporting documents such as letters of 
transmittal or instructions for filing. The acts which are alleged to 
constitute error without deceptive intent should cover the period 
leading up to and including each of the proscribed foreign filings.
* * * * *

    Dated: September 4, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-23010 Filed 9-11-03; 8:45 am]
BILLING CODE 3510-16-P